Red Bull colour combination marks

In 2002, Red Bull applied for a colour combination mark as set out below, covering “energy drinks” in class 32:

The mark proceeded on the basis of acquired distinctiveness, and during the course of examination Red Bull included the following written description: “Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%-50%.”

In 2010, Red Bull filed a second EUTM application for the same mark. Although published within two months of filing, the examiner requested that an indication be given of the proportions in which the two colours would be applied, as well as the way in which those colours would appear. The applicant responded that “the two colours will be applied in equal proportion and juxtaposed to each other”. The mark proceeded to registration with this verbal description, as well as noting that the colours were “blue (Pantone 2747C) and silver (Pantone 877C)”.

Optimum Mark applications for invalidity

In September 2011, Optimum Mark sp.z o.o. (Optimum Mark) applied to invalidate the second registration for failing to comply with the modern iteration of Article 7(1)(a), (b) and (d) of EUTM Regulation 2017/1001, on the basis that the graphic representation of the mark was not clear, precise, self-contained, easily accessible, intelligible, durable, objective and systematically arranged by associating the colours in a predetermined and uniform way. Optimum Mark also noted that the term “juxtaposed” could be understood as “having a border in common with”; “placed side by side”; or “dealt with close together for contrasting effect”. As such, it claimed that the registration did not indicate the type of arrangement in which the two colours would be applied to the goods and was therefore not self-contained, clear and precise.

In September 2013, Optimum Mark applied to invalidate the first registration on similar grounds, claiming that the verbal description allowed for numerous different combinations of ratios of “approximately” 50% to 50% of the two colours and therefore numerous arrangements such that consumers would not be able to repeat with certainty a purchase experience.

EUIPO decision

In October 2013 the EUIPO found both marks to be invalid, noting that they both constituted the “mere juxtaposition of two or more colours, designated in the abstract and without contours” (in line with the CJEU’s judgment in Heidelberger Bauchemie (C-49/02)) and did not exhibit the qualities of precision and uniformity required, since they allowed numerous different combinations which would not permit consumers to perceive and recall a particular combination, thereby enabling them to repeat with certainty the experience of a purchase; nor would they allow the competent authorities and economic operators to know the scope of protection afforded.

Board of Appeal decision

Red Bull unsuccessfully appealed both decisions. The Board of Appeal noted that the requirements of registration laid down in Article 4 of the EUTM Regulation were also intended to prevent the abuse of trade mark law by allowing a brands owner an unfair competitive advantage (as well as enabling competent authorities and economic operators to have precise information of third party rights).

Red Bull had tried to argue that the graphic representation was sufficiently precise in that it showed the colour blue on the left, and the colour silver on the right, both being juxtaposed (that is, divided into equal proportions by a central vertical line). The Board of Appeal noted that an explicit description to that effect should have accompanied the representation of the marks.

Red Bull appealed to the General Court.

Before the General Court, Red Bull argued that:

• Heidelberger Bauchemie had been applied too strictly, and that it should only apply to combinations of colours per se, containing a description expressly claiming protection “in every conceivable form”, unlike the description of the two registrations in question which was precise and not arbitrary;
• For the Board of Appeal to require a detailed description of the way in which the marks would be used was appropriate for assessing a claim of acquired distinctive or genuine use, but not whether a mark complied with the requirements of precision etc, set out in Article 4;
• Requiring an “explicit” description of the actual use of a colour mark was tantamount to imposing an additional condition for the registration of colour combination per se marks.

Red Bull and Optimum Mark at the General Court

The General Court noted that as a founding principle, a European Union trade mark must always be perceived unambiguously, uniformly and durably, so that the function of the mark as an indication of origin is guaranteed.

In that respect, it was important to consider whether the contested marks allowed numerous different combinations of the two colours at issue.

The graphic representation of both marks was identical (a vertical juxtaposition of the colours blue and silver, in the ratio of 50:50).

A different verbal description accompanied each mark, one describing the colours in the context of the RAL system and noting the “approximately 50%-50%” ratio; the other used the Pantone colour reference system and noted that the colours “will be applied in equal proportion and juxtaposed to each other”.

The General Court agreed with the Board of Appeal that the graphic representations of both marks consisted of a mere juxtaposition of two colours without shape or contours, allowing several different combinations of those colours. It also agreed that the verbal descriptions did not provide additional precision as regards the systematic arrangement associating the colours in a predetermined and uniform way, precluding a number of different combinations.

The General Court noted that the evidence submitted by Red Bull in order to support a claim of acquired distinctiveness showed the marks used in a manner “very differently in comparison to the vertical juxtaposition of the two colours shown in the graphical representation[s]”.

The General Court confirmed that the outcome of having an EUTM registration allowing a plurality of reproductions (which are neither predetermined in advance nor uniform) “is precisely the outcome” which the judgment in Heidelberger Bauchemie had sought to prevent. The court also rejected Red Bull’s argument that this would effectively amount to the denial of the existence or registrability of the concept of colour combination marks per se, noting that applicants should merely file a graphic representation of the mark corresponding precisely to the subject matter of the protection they wish to secure (and no more).

Red Bull also tried to argue that by requiring a description of a systematic arrangement of colours that are the subject of a combination of colours per se would effectively remove the distinction between colour per se marks and figurative marks.

The General Court rejected this, noting that even if the description of a precise arrangement of colours makes a colour per se mark more akin to a figurative mark, the subject matter of the protection afforded by those two categories of marks remains distinct.

In short

This case highlights the increasing difficulties in registering colour marks per se, whether comprising a single colour or a combination of colours, and of defending such registrations that may have been granted under earlier, perhaps more forgiving, jurisprudence.

Case details at a glance

Jurisdiction: European Union
Decision level: General Court
Parties: Red Bull GmbH (applicant), supported by Marques (intervener) v EUIPO (defendant) and Optimum Mark sp. z o.o
Citation: 2017] EUECJ T-101/15, ECLI:EU:T:2017:852, EU:T:2017:852
Date: 30 November 2017
Full decision: http://dycip.com/redbullvoptimummark