The matter at hand

Oy Hartwall, a Finish citizen, applied for a national trade mark consisting of a figurative element in the shape of a blue and grey ribbon for mineral waters in class 32. In the application for registration, Hartwall indicated that the mark was to be considered a colour mark and included the international colour codes for the colours blue and grey as part of her application.

After receiving an interim decision of the Finish intellectual property office, the Patentti- ja rekisterihallitus, Hartwall clarified that she was applying for the registration of a figurative mark, and not a colour mark. The intellectual property office, however, proceeded to examine the application as a colour mark and subsequently rejected it, holding that Hartwall failed to prove the colour mark had acquired distinctive character through long-term significant use.

Hartwall appealed the decision all the way up to the Korkein hallinto-oikeus (Supreme Administrative Court, Finland), which referred preliminary questions to the ECJ, asking whether the classification of a sign as a colour mark or a figurative mark is of importance in the assessment of its distinctive character, and if so, whether a mark represented as a drawing can be registered as a colour mark.

The judgment of the ECJ

The ECJ holds that the classification of a sign by the applicant as a colour mark or a figurative mark is indeed a factor relevant for the purpose of establishing whether that sign is distinctive.

Although the ECJ recognizes that “the criteria of assessment of the distinctive character of colour marks are the same as those applicable to the other categories of marks”, the ECJ notes that it is also apparent from the ECJ’s case-law “that the perception of the relevant public is not necessarily the same in the case of a sign consisting of a colour per se as it is in the case of a word or figurative mark” (paragraphs 28 and 29). Referring to Libertel (C‑104/01), the ECJ recalls that while the public is used to perceiving word or figurative marks instantly as signs identifying the commercial origin of the goods, a colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking. As a result, “in the case of a colour per se, distinctiveness without any prior use is inconceivable save in exceptional circumstances” and proof of acquired distinctiveness is generally required.

However, the ECJ stresses that this does not release competent trade mark authorities from the obligation to carry out an examination of the distinctive character “by reference to the actual situation, taking account of all the circumstances of the case. Thus, it would run counter to such an examination if those authorities could establish distinctive character of a colour per se or colour combination only on account of such a colour sign being used in relation to the goods or services claimed” (paragraph 32). In other words, the fact that a colour per se or a colour combination has not been used in relation to the goods or services claimed, is not in itself sufficient to conclude that the sign lacks distinctive character and does not release the competent authorities from their obligation to assess whether the sign is inherently distinctive (although the latter is conceivable in exceptional circumstances only).

The ECJ holds that the classification of a sign as a colour mark or a figurative mark is furthermore relevant in order to determine the subject matter of the application and the scope of the protection sought for the purpose of applying Article 2 of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (paragraph 25). Citing Heidelberger Bauchemie (C‑49/02), the ECJ recalls that if it appears that the subject matter is a colour combination designated in the abstract and without contours, the graphic representation of those colours must be systematically arranged by associating them in a predetermined and uniform way (paragraph 33).

In light of these considerations, the ECJ answers to the first question that “the classification as a ‘colour mark’ or ‘figurative mark’ given to a sign by the applicant on registration is a relevant factor among others for the purpose of establishing whether that sign can constitute a trade mark within the meaning of Article 2 of [Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks] and, if so, whether it is distinctive within the meaning of Article 3(1)(b) of that directive, but does not release the competent trade mark authority from its obligation to carry out a global assessment of distinctive character by reference to the actual situation of the mark considered, which means that that authority cannot refuse registration of a sign as a mark on the sole ground that that sign has not acquired distinctive character through use in relation to the goods or services claimed” (paragraph 35).

With regard to the second question, the ECJ recalls that the verbal description of a sign serves to clarify the subject matter and scope of the protection sought. An inconsistency between that description and the graphic representation of the sign could therefore result in it becoming impossible to determine that subject matter and scope clearly and precisely. If that is the case, the competent authority must refuse registration. Applied to the case at hand, the ECJ rules that the application indeed reveals an inconsistency making it unclear and imprecise, given that the sign is represented by a colour drawing with defined contours, while the classification given by the applicant is that of a colour combination without contours.