Colour trademark application that has the appearance of a figurative trademark

Thursday, 4 of April of 2019

Last 27 of March 2019, the Court of Justice of the European Union (hereinafter, CJEU) commented on the interpretation of the graphical representation, provided in article 2, and distinctive character under articles 2 and 3, paragraphs 2, b), and 3 of the Directive 2008/95/EC , regarding colour marks.

The origin of the proceedings arises from the conflict between the company Oy Hartwall Ab and Patentti-ja rekisterihallitus (Intellectual Property Office, Finland). Oy Hartwall Ab tried to register a trademark composed by a figurative element as a colour trademark.

In order to understand the mentioned decision, it is important emphasize that the applicant sought to register a sign composed by a blue band with grey edges for goods in Class 32 (“Mineral Waters”). It was described as follows: “The colours of the sign are blue (PMS 2748, PMS CYAN) and grey (PMS 877)”. An image of the sign is presented below:

By decision of 5 June 2016, the Intellectual Property Office rejected the trademark application, due to its lack of distinctiveness. Oy Hartwall Ab wasn’t able to prove that the colours, whose protection was requested, had been used so extensively and durably that costumers could associate the colours with the applied goods.

Hartwall appealed against the examiner’s decision to the markkinaoikeus (Economic Affairs Court), without obtaining success for his interests. Consequently, he raised the issue to the korkein hallinto-oikeus (Contentious-Administrative Supreme Court), who suspended the proceedings and referred the following questions to the Court:

a. Whether it is relevant to request a trademark registration of a figurative mark or a colour trademark, in order to determinate the subject and scope of protection conferred to a sign. If so, Does the examination of the distinctive character of a colour trademark differs from the criteria used for other trademark categories?

b. Whether it is possible to request the protection of a colour trademark when the sign is represented graphically and the color, whose protection is requested, is delimited by a shape.

Concerning the first question, the CJEU highlights the importance to clarify the trademark’s nature in order to determine the subject and scope of protection of the requested sign. In this light, the colour trademark will protect the exclusive right to use a colour without any especial delimitation. Furthermore, the figurative mark will protect the right to use the sign as it is represented in the trademark application with all its ornamental elements.

Regarding the distinctive character of colour marks, the Court points out that, in order to appreciate it, examiners must carried out a specific examination, taking into account the same elements and circumstances to those applicable to other types of trademarks. Therefore, regardless trademarks’ nature, it is not possible to establish more restrictive or flexible criteria.

Although the criteria relating to the distinctive character assessment are the same for both colour marks and figurative marks, the referring Court stated that it must be taken into account the colour mark’s particularities, such as the following:

a. A colour mark does not always have a distinctive character ab initio, since it is difficult for consumers to associate colors with company’s products.

b. To safeguard the general interest, an exclusive right is granted over a colour or combination of colours, as long as it doesn’t limit unduly other competitor’s use.

Regarding the second question, the Court considers that it is not possible to request the protection of a sign that has the appearance of a figurative mark as a colour mark. This is so, since it would cause confusion within examiners for assessing the subject and the scope of protection of a trademark, as well as over competitors to know the trademark’s nature.

Those circumstances appear to reveal that the particularity of a color mark lies in the fact that it is over a colour without contours that the protection is granted. However, this does not mean that the exclusivity cannot be granted over a delimited colour in a graphic. Indeed, this could be possible, as long as it is specified within the trademark application that the contours are not part of the mark.

Teresa Galgo