On Focus

Author: Aurelio Assenza

Intellectual Property and Information Technology

Red Bull wins Formula 1 Germany 2019 GP but beats against the milestones applicable to the validity of colours marks

Last Sunday the Red Bull team’s driver Max Verstappen won an exciting Formula 1 Germany 2019 GP at Hockenheimring, however few days later - on 29 July 2019 - Red Bull GmbH succumbed before European Court of Justice (case C-124/18 P), which dismissed the appeal of Red Bull against the decision of the General Court of the European Union and thus confirmed the invalidity of two colours (blue and silver) trademarks of Red Bull (the first one filed on 2002 and registered on 2005, the second one filed on 2010).

The relevant combination of colours is the following:

Namely, the description of the first mark was “Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%–50%.”; the description of the second one was “‘blue (Pantone 2747C), silver (Pantone 877C).  The two colours will be applied in equal proportion and juxtaposed to each other”.

The company Optimum Mark applied with OHIM (now EUIPO) for declaration of invalidity of both signs of Red Bull. The Cancellation Division declared invalid the signs, inter alia, on the ground that they were not sufficiently precise. Namely they “allowed numerous different combinations which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to make further purchases with certainty”.

The decision of the Cancellation Division was confirmed by the First Board of Appeal of EUIPO and then by the General Court.

By dismissing the appeal of Red Bull, ECJ recalled some milestones applicable to colors trademarks according to European settled case-law:

-      “a sign may be registered as a mark only if the applicant for the mark provides a graphic representation in accordance with the requirement in Article 4 of those regulations [i.e. reg. 40/94 and 207/09[, to the effect that the subject matter and scope of the protection sought are clearly and precisely determined” (case C-578/17, 27 March 2019, Hartwall);

-      “in the examination that occurs when registering a sign consisting of a combination of colours, particular attention must be paid not to unduly restrict the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought” (cases C-104/01, 6 May 2003, Libertel; case C-49/02, 27 June 2004, Heidelberger Bauchemie);

-      “a graphic representation of two or more colours, designated in the abstract and without contours, must be systematically arranged in such a way that the colours concerned are associated in a predetermined and uniform way […] mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’, will not exhibit the qualities of precision and uniformity required by Article 4 of Regulation No 40/94 (now Article 4 of Regulation No 207/2009). […] such representations would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to make further purchases with certainty, any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark” (case C-49/02, 27 June 2004, Heidelberger Bauchemie).

The Court applied such milestones to Red Bulls’ signs and confirmed their invalidity since:

-      “the mere indication of the ratio of the two colours blue and silver allowed for the arrangement of those colours in numerous different combinations and did not therefore constitute a systematic arrangement associating the colours in a predetermined and uniform way […] the graphic representation supplied in the present case, accompanied by a description indicating only the proportions of the two colours, could not be considered sufficiently precise and that the contested mark had not been registered in accordance with Article 7(1)(a) of Regulation No 207/2009”

-      “the word ‘approximately’ in the description merely reinforces the lack of precision of the graphic presentation, which allows for different arrangements of the colours at issue”

-      the indication of the fact that ‘the two colours [would be] applied in equal proportion and juxtaposed to each other’, entails that “juxtaposition can take different forms, giving rise to different images or layouts, while still being in equal proportion”

-      “the lack of precision of the two graphic representations, together with their description, is confirmed by the fact that the appellant’s applications for registration, filed on the basis of the acquired distinctiveness through use of the marks at issue, were accompanied by evidence which reproduced those marks very differently in comparison with the vertical juxtaposition of the two colours shown in the graphic representation included in those applications”.

From ECJ decision briefly commented herein, we can learn, among other things, that the application for trademark registration of colors or combination of colors requires, more than other kind of trademark, outmost and extreme precision, clearness, intelligibility and self-contained details.

Like a pit-stop during a Formula 1 GP.

However, I wonder if the ruling of ECJ would be the same if the contested signs were applied after 1 October 2017 and thus subject to art. 4 of Reg. EU 2017/1001 on the European Union trade mark, which does no longer require the “graphical representation” of the sign to which the application refers.

As clearly stated by EUIPO, the objective of the application of the so-called principle “what you see is what you get’ system” is “to increase legal certainty for users and reduce the objection rate for formality objections”, without prejudice to the fact that the signs can be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

So, since the Red Bull case is based on “formality objections” mainly related to the “graphic representation” of the signs, maybe a similar case decided by applying the new rules set out by Reg. EU 2017/1001 might have a different outcome.​​​​