December 27, 2017
The courts have delivered the latest ruling on the long-running issue of whether or not companies are able to trademark colours associated with their brands. In Red Bull GmbH v European Union Intellectual Property Office (EUIPO), the European General Court (Second Chamber) (the Court) upheld the EUIPO’s decision to cancel two of Red Bull’s European “colour combination” trade marks for “lack of precision”.
It is easy to see why brands might want to trademark colours. Colour is often the stand-out initial attribute of a product, and can build long-lasting associations with the brand in consumers’ minds. It is this representation of a brand that a trademark seeks to protect. For example, think of Cadbury and it is likely that one immediately also thinks of a particular shade of purple. The same applies to Louboutin shoes and a certain shade of red. However, there is one crucial difference between these two iconic brands and their associated colours: where the US courts ruled that Louboutin could trademark the red it uses on the soles of its shoes, the UK courts declined to permit Cadbury to protect its famous purple in the same way.
Extending trademarks to colours has never been straightforward. In Article 15(1), the World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights expanded the accepted definition of a trademark to include “any sign…capable of distinguishing the goods or services of one undertaking from those of other undertakings”. Even this was not sufficient to create unanimity in different jurisdictions, as demonstrated by the different approaches of the UK and US courts. On the face of it, the decision in Red Bull GmbH v European Union Intellectual Property Office seems to take a similarly hard line to that adopted by the UK courts.
Red Bull was seeking to protect not a single colour but “colour combinations”: the blue and silver livery of its products. Applicants wishing to trademark colour combinations must provide the EUIPO with:
• an appropriate representation of the mark that shows the systematic arrangement of the colour combination in a uniform and predetermined manner; and
• a reference to a generally recognised colour code (e.g. Pantone) relating thereto.
However, the Court ruled that Red Bull’s marks amounted to no more than “mere juxtaposition of two or more colours, designated in the abstract”. This was not sufficient to gain trademark protection.
Implications of the decision
The ruling has been greeted with a certain amount of doom and gloom. However, there are two arguments that suggest Red Bull may be specific to its facts and not necessarily a coup de grace for colour combination trademarks:
1. compare the written description for Red Bull’s colour combination registrations with those submitted in support of colour combination registrations for other brands’ products. Red Bull’s is noteworthy for its lack of detail or, in the Court’s own word its lack of, “precision”; and
2. Red Bull might have made a more effective rebuttal of EUIPO’s case if it had referred more closely to the relevant EU legislation and, in particular, to the point that combinations of colours “in the abstract” are registerable.
It is possible that Red Bull may appeal to the CJEU. In the meantime, brands hoping to register colour combinations should not necessarily be dissuaded by this decision although they might wish to mull over the possibility that registering a single colour may be easier than registering a combination.