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Colour combinations:
getting back to WYSIWYG
Guidance on protecting colour combinations in Europe has
evolved over time. But in the light of recent decisions is further
clarification needed? Roland Mallinson investigates
I
t surprises the general public that anyone in business can
“own” or monopolise a single colour as a trade mark. The
idea that one of a fairly limited range of colours (a rainbow is said to include just seven: red, orange, yellow,
green, blue, indigo and violet) could be permanently denied for use by other traders raises eyebrows.
In the face of this sentiment, one might expect our laws and registries to be setting an extremely high threshold for those seeking such monopolies. Likewise, you would expect the threshold
to be lower for combinations of colours. The latter are, after all,
how many businesses and organisations identify themselves.
For example, readers with an interest in cricket will instantly
recognise the yellow and red colours below as worn by MCC
members at the home of cricket, Lord’s Ground (pictured, figure 1).
Figure 1
The reasoning is simply that combinations of colour can give
rise to many more possible options, such that any grant of monopoly is less oppressive for other traders than a single-colour
1
MINUTE
READ
Many businesses use combinations
of two or more colours to identify
themselves but ironically case law in
Europe makes it more, not less, difficult to register two-colour combination marks than single colour marks.
Over the past 15 years, EUIPO guidance on colour combinations has
gone through five versions, many
such marks are registered and have
bene relied on in oppositions. However, two pending cases involving
Red Bull marks threaten to undermine all of these marks, while another involving GSK is under appeal
in the UK. The first instance rulings
in these cases suggest that more
onerous requirements are being
placed on applicants for colour combinations than for other types of
mark. The General Court and England and Wales Court of Appeal
have an opportunity to find the right
balance and allow the WYSIWYG approach to prevail.
M A N A G I N G I P. C O M O C T O B E R 2 0 1 6
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monopoly. If you have a palette of 14 colours, say, then there are
91 possible two-colour combinations. However, the irony is
that current case law seems to make it more, not less, difficult
to register two-colour combination marks than single colour
marks. This article looks at and comments on this case law (in
particular a recent UK High Court case and a soon to be heard
EU General Court case).
Combination marks
• Version 3 (2008) was less helpful and merely stated that the
colour must be represented “without contour” and the proportion of the colours must be specified along with “how
they will appear”. Although the latter was stated as a mandatory requirement, the wording was imprecise and unhelpful.
Figure 3
• Version 4 (2015) largely mirrored the previous wording.
However, it omitted the imprecise words and instead turned
them into an option. The mark “may [emphasis added] be
represented by showing the colour or colours as they will
be applied to something”. Note that the optional element of
a description reflects the wording in Rule 3(4) of the
EUTM Implementing Regulation 2868/95 (the only
mandatory requirement is in Rule 3(5) for colour marks to
show the colour and have it identified in words or, optionally, to specify a colour code). This version cites a Red Bull
registration as an example of an acceptable manner of representation. That used an image of blue and silver in four diametrically opposite quadrants and a description of the
colours being “juxtaposed as shown” and stating the ratio.
The latter type of mark needs a description to clarify that it is a
colour combination mark per se, without contours. Without
that it could just be a square as depicted. The question is then
how to describe the mark and how much importance is given
to the description as compared to the image. Getting this wrong
can lead to an otherwise legitimate registration (for example
one which has compelling evidence to show acquired distinctiveness) being invalid. The rules on this are evolving but, Tantalus-like, clarity seems always out of reach.
• Version 5 (2016) was updated to address the amendments,
effective from March 2016, made to the EUTM Regulation,
in particular the dropping of the requirement for marks to
be “capable of graphic representation”. These repeated the
version 2 clarification that an indication of how the mark
would appear on a product is not needed. The image must
“spatially delineate” the colours so as to determine the scope
of the right and it should “clearly indicate the proportion and
position of the various colours”.
EUIPO Guidelines
Marks on the Register
The EUIPO has provided considerable public guidance to its
examiners over the years on the acceptability of such marks for
registration. This has evolved as set out below:
With the applicants no doubt trying religiously to adhere to the
examination guidelines of the day, there are numerous colour
combination EUTM and national registrations in force today.
Nearly all of these show the colours in blocks or stripes, Pantone
(or equivalent) numbers are given and the proportions are
stated with precision. An example is one owned by Duracell
(EUTM 8148934) with description “colours copper and black
in relationship of 1/3 copper and 2/3 black” (with Pantone
numbers given). There are also many current EUTMs that state
the percentage preceded by words such as “approximately”,
“around” or “roughly”, such as EUTM 12047544 (dark blue and
red). A number of older ones do not even state the proportions,
for example IKEA’s EUTM 4638177 for yellow and blue (although it is apparent from the image that it is 50:50).
It is important to draw the distinction between marks that are
combinations of colour as applied to particular things and just
the combination itself. The former are essentially colour figurative or shape marks, whereas the latter are conceptually more
general. Using the MCC colours as examples, the former might
be depicted as in figure 2 and the latter is typically depicted as
in figure 3.
Figure 2
• In version 1 (before the Libertel CJEU decision – Case C104/01) examiners were told that applicants were “free to
use [their] own description” of the colours and ensure that
the image was consistent with that.
• Version 2 (2006) of the examination guidelines came out
some time after Libertel (a single-colour case) and subsequent to the CJEU decision Heidelberger Baumchemie (C49/02, the first and only CJEU or General Court decision
relating to two-colour combination marks). Attempting to
reflect the latter decision, the guidelines stated that “the
graphic representation as filed will determine the mark, including the proportion and position of the various colours,
which must be clear from the representation (WYSIWYG,
what you see is what you get)”. Claims to the colours “in any
possible combination” (as per the Heidelberger mark) or “in
any proportion” were to be refused. It was specifically stated
that a description of how the colour would appear on the
product was not required “because what matters is the sub-
2
ject-matter of the registration, not the way it is or can be used
on the product”.
M A N A G I N G I P. C O M O C T O B E R 2 0 1 6
These types of registration have been relied on in many oppositions without incident. This includes at least eight cases taken
on appeal to the EUIPO Boards of Appeal, such as Case R828/2012-1 relying on EUTM 9566051 (blue/black combination). In none of those cases was there any apparent question
that those colour combination marks were invalidly registered
for deficiencies in their graphic representation (contrary to Article 4 EUTM Regulation). It was effectively assumed that they
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satisfied the CJEU’s Sieckmann criteria of being “clear, precise,
self-contained, easily accessible, intelligible, durable and objective” (Case C-237/00).
Threat to colour combination
registrations
However, all of this is being thrown into doubt. The latest cases
suggest that applicants were wrong to have followed the EUIPO
guidance. The result is that many, if not virtually all, of the colour
combination EUTMs registered to date face potential cancellation. It poses a real threat to some very significant brand value
within the EU.
The threat comes from two Board of Appeal decisions (Cases
T-101/15 and T-102/15) in which two separate Red Bull
blue/silver colour combination EUTMs were cancelled and
the appeals that are pending before the General Court now. If
those are upheld, there will seemingly be a mandatory requirement for applicants to give an “explicit description” of how the
colours will be applied to the product (or in marketing materials
for services). As can be seen above, that runs counter to the
EUIPO Examination Guidelines to date, in particular version
2 and the current version.
Red Bull General Court cases
When it comes to combination marks, the two Red Bull Board
of Appeal decisions again relate to what has become an industry
norm in terms of how to represent such marks graphically. The
marks were depicted in the usual way with the blocks of blue
and silver shown side by side (see figure 4) and the colours were
identified by reference to a code.
Figure 4
The registrations came with clarifications:
• For one, under the entry “Indication of colour – ID591”, it
stated that the “ratio of the colours is approximately 50% –
50%”.
• For the other, under the entry “Description – ID571”, it
stated that “the two colours will be applied in equal proportion and juxtaposed to each other”.
There has been no criticism of the images used for the registrations. Their primary downfall has been the descriptive words
used to interpret those images and the importance and weight
given to those words as compared with the image alone.
The word “juxtaposed” in the second registration will resonate
with those familiar with the Heidelberger decision. Paragraph 34
of the CJEU’s decision in that case said: “The mere juxtaposition of two or more colours, without shape or contours, or a
Single colour marks
The threat outlined in this article also has the effect of making it easier
to satisfy the requirements of representation of the mark for a singlecolour mark than a combination of colours. For a registration covering
goods, a single-colour mark just needs to show a block of the colour,
identify it as a colour per se mark and give the relevant colour code.
Optionally it may also describe the colour as being applied to the
goods or their packaging, although that ought to be implicit.
However, even single-colour marks are not without danger when it
comes to representing them on the application form. As Cadbury
learned to its cost with its purple colour mark, it can be invalidated if
the description tries too hard to reflect the reality of its use. The England and Wales Court of Appeal concluded that it was too vague to describe the colour purple as “being the predominant colour” used
([2013] EWCA Civ 1174). Such wording is common to a number of
other UK registrations (and probably some EUTMs), not least because
it was the wording recommended in the UKIPO’s examination guidelines. However, it was held that this wording covers more than one
sign and allowed for different permutations, presentations and appearances with any number of other colours included.
For single-colour marks, the better approach might be simply to refer
to the relevant colour code and provide no further description, in particular about use. This risks a future revocation argument that use with
some other colours (albeit in the minority) or with words or logos superimposed (that is, normal brand use) does not amount to genuine
use of just that single colour. However, why should such use not suffice provided the other features do not alter the distinctive character of
the single colour used? This just applies Article 10(1)(a) of the Trade
Mark Directive and is consistent with other types of marks (words or
logos) that are often used in conjunction with further marks.
reference to two or more colours ‘in every conceivable form’, as
is the case with the trade mark which is the subject of the main
proceedings” does not satisfy the requirement. The Heidelberger blue/yellow mark included just such words within the
descriptive. The Red Bull marks did not and yet were held to
have the same deficiency, and so they suffered the same fate as
Heidelberger’s mark.
Red Bull, supported with an amicus curiae brief from the European trade mark owners’ association, MARQUES, is arguing
that this misinterprets and misapplies Heidelberger. There is
some doubt that the word “juxtaposed” in the English version
of the Heidelberger decision is a proper translation of either the
German version (being the language of the case) or the French
version (being the language in which all CJEU decisions are
first written). Even then, there is also doubt that the CJEU
meant its paragraph 34 to convey the meaning being applied.
Careful scrutiny of how the commas are used in both the English and German versions suggests that the CJEU wanted to
confine the decision to combinations described as covering
“every conceivable form” in those or similar words. This construction works if the words “as in the case” in paragraph 34 are
taken to apply to, and therefore qualify, all the words preceding
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them in that sentence. If so, the words “the mere juxtaposition”
would relate to the Heidelberger-type descriptions but not the
Red Bull-type descriptions. This would also be consistent with
other CJEU decisions such as the rejection of Dyson’s trade
mark application for “all conceivable shapes of transparent collecting bins” (C-321/03).
This problematic paragraph 34 wording could, if the General
Court rejects Red Bull’s appeal, be the downfall of many other
EUTMs. It means any registration with the image of two
colours side by side will be taken to cover “every conceivable
form” of the combination even if that is not expressly or even
impliedly stated. The argument is that they could cover any of
the combinations in figure 5 and many others besides (assuming the colours and proportions were right).
Figure 5
However, such a view is hard to reconcile with the blue/silver
image of the two large blocks of colour as depicted in the registration. It must be a question of degree and common sense as
to how a sign, as represented and described, would be perceived
by the relevant public, including other traders and consumers.
To say these variants align with the registration means the description has to take total precedence and the image in the registration is effectively ignored.
In addition, the Red Bull registration was obtained in reliance
of evidence of acquired distinctiveness. If that use was only ever
in one particular format, arguably that evidence could be used
to help interpret the scope of the mark represented. Likewise,
if the use was of certain formats but clearly not others (such as
the variants above), it would seem artificial to strain the interpretation to cover uses that do not match either the image or
reality.
It would be unduly harsh on applicants for representations to
be stretched in this way. To do so effectively seeks to pre-empt
a hypothetical future infringement scenario that may never
arise. If it did arise, then it seems reasonable that there would
not be infringement of an identical sign under Article 9 EUTM
Regulation but that there could still be infringement on the
basis of confusion, dilution or free riding. Contemplating such
a scenario should not render the registration invalid.
GSK High Court case
So these cases raise, but do not fully answer, the question of
how much weight should be given to the description of a colour
combination mark as compared to the image shown. This was
also considered recently by the English High Court. In Glaxo v
Sandoz ([2016] EWHC 1537), the mark registered showed a
side-on representation of GSK’s two-colour Seretide inhaler
(figure 6).
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M A N A G I N G I P. C O M O C T O B E R 2 0 1 6
Figure 6
The description identified the Pantone codes for the two different purples, with the first colour “applied to a significant proportion of an inhaler” and the second colour applying to the
rest of the inhaler. His Honour Judge Hacon held that this did
not meet the requirement for the sign to be “capable of being
represented graphically”. In his view, neither the image nor the
words should prevail. However, he expected there to be “strict
congruence” between the two. He held that GSK’s representation did not clearly and unambiguously relate to just one sign
and, instead, it posed a “puzzle for the reader”.
Among other things, GSK had allegedly argued in another jurisdiction that its registration also covered a rectangular version
as shown in figure 7. Why that is relevant is hard to see since
the test is not subjective. In any event, Hacon saw no need to
refer the issue to the CJEU, despite having had the Red Bull case
brought to his attention. He decided the case on a summary
judgment basis. It is being appealed.
Figure 7
The judge was invited to consider various other registrations
where the two-colour signs were depicted in the more normal
way, for example as in Red Bull’s registration. In his view, even
images of that type offer “little or nothing by way of an indication of the precise and uniform mark which was being claimed”.
This part of the decision is not binding as it was not relevant to
the GSK case. In any event, the point is not how the image is
viewed alone but in conjunction with any description offered.
In that context, such marks would seem to pose much less of a
“puzzle for the reader” than the GSK registration, which does
not specify any proportions and implies it covers inhalers of
various but unspecified shapes.
It is the current state of the case law that presents the puzzle.
Owners of two-colour brands are left unsure whether and how
they can protect well-known and highly distinctive corporate
colours in the broadest sense.
An MCC example
If the MCC were to seek registration for all types of sports balls,
it might reasonably be registered with an image in the form on
the left of figure 8 and a description stating: “The colours yellow
(Pantone X) and red (Pantone Y) in the proportion 50:50.”
There should be no need to include the words “as depicted”
(this should be a given) and no need to say “as applied to the
goods or their packaging” (again this should be a given).
EUROPE COLOUR TRADE MARKS
Figure 8
This combination would clearly be intended to cover the
cricket, golf and rugby balls shown alongside. These use straight
lines of separation (in the case of the cricket and rugby balls,
using their seams). It would seem reasonable that such a registration would also cover the tennis ball, even though the line of
separation is no longer straight, it uses large blocks of yellow
and red in equal proportion.
The General Court in Red Bull and the England and Wales
Court of Appeal in GSK have the opportunity to help us find
the right balance between the extremes of ignoring the image
and of ignoring the description. The preferable outcome would
be to allow the WYSIWYG approach to prevail as fairly outlined in the EUIPO guidelines (whether version 2 or 5) thereby
saving from cancellation registrations of the type cited as exemplars in version 4 of the guidelines. As noted above, the latter
ironically includes another Red Bull blue/silver registration.
In contrast, the registration should not cover the first three footballs in figure 9 but might be taken to cover the stripy one. However, if the lines were much closer then arguably not.
Figure 9
By interpreting the image and description in this way, the mark
does not cover an almost infinite range of designs. In essence,
it is clear on any reasonable interpretation. This ought to be sufficient to meet the Sieckmann criteria.
Amended Regulation
It also should meet the new requirement, applicable from next
year, following the amendment of the EUTM Regulation. That
did away with the requirement for “graphical representation”
and new Article 4(b) sets the test of enabling “the competent
authorities and the public to determine the clear and precise”
mark protected.
EU principles and the WYSIWYG
approach
If the representation in the MCC example is deemed insufficient, it suggests that colour combination marks are being singled out to have registrability requirements that are considerably
more onerous than for any other type of mark.
To test this, consider the CJEU’s approach to Apple’s store layout mark (IR 1060321). That combines a two-dimensional
drawing of the front of a store with a description: “The mark
consists of distinctive design and layout of a retail store” and
colours identified as “steel gray [sic] and light brown”. Despite
the fact that no dimensions were given for these stores, the
CJEU did not question whether the sign was sufficiently represented (Case C-421/13). In EU law terms, if such a representation is sufficient but our MCC example is not, then applicants
(and owners of existing registrations) would seem justified in
questioning whether the principles of proportionality and legitimate expectation are being rightly applied.
© Roland Mallinson 2016. The author is a
partner of Taylor Wessing in London
Roland
Mallinson
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