IP Review Winter 2019/20

To find out more contact Mark Caddle mcaddle@withersrogers.com 7 with certainty a purchase experience’. The same argument regarding certainty was put forward by Optimum in regards to the term ‘juxtaposed’ used in the definition of EUTM No. 9417668. The General Court of the EU accepted Optimum’s arguments and declared Red Bull’s marks to be invalid. Red Bull’s appeal to the CJEU In response to the invalidation decision, Red Bull filed an appeal at the CJEU. In particular, Red Bull argued that the General Court of the EU had infringed Articles 4 and 7(1) (a) ‘by holding that marks consisting of a combination of colours must systematically specify the spatial arrangement of the colours in question’ and deeming Red Bull’s marks to be insufficiently precise. In the earlier case of Heidelberger Bauchemie, the CJEU noted that for colours or combinations of colours, claimed in the abstract without contours, to be capable of registration as a trade mark, the application must include ‘a systematic arrangement associating the colours concerned in a predetermined and uniform way’. However, Red Bull argued that the General Court had misinterpreted Heidelberger Bauchemie by failing ‘to have regard to the specific feature of marks consisting of a combination of colours, which is not to have contours’. Dismissing Red Bull’s appeal and upholding the invalidation decision, the CJEU noted that it is necessary for the graphic representation provided to clearly and precisely determine the scope of protection sought and to prevent the possibility of the colours being arranged in numerous different combinations. Moreover, the CJEU held that any accompanying verbal description must be consistent with the graphic representation of the trade mark and not give rise to any doubts as to the subject matter or scope of the graphic representation. Impact on brand owners In their Red Bull judgements, neither the General Court of the EU nor the CJEU provided any guidance on how the difficulties of registering colours or colour combinations can be overcome. However, Red Bull have subsequently successfully registered a second mark (see image 2) in respect of ‘energy drinks’ in Class 32 (EUTM No. 18028411). As opposed to their previous marks, Red Bull did not include a verbal description alongside this graphic representation and simply claimed Pantone colours 2747C and 877C. Whilst this mark has been registered by the EUIPO, it has not yet been challenged on grounds of validity and it is unclear whether the absence of a verbal description will help or hinder the enforcement of Red Bull’s rights. However, it does seem more precise than the invalidated registrations. Other colour marks which have been successfully registered include highly detailed verbal descriptions. The EUIPO appears to have accepted these descriptions on the basis that the verbal description accurately mirrors the graphic representation and satisfies the Heidelberger Bauchemie criteria of ‘a systematic arrangement associating the colours concerned in a predetermined and uniform way’. Overall, whilst colour and colour combination marks are theoretically inherently capable of registration, this case demonstrates the complexities involved with securing valid registrations and it highlights the importance of ensuring that any colour mark applications describe the mark clearly and precisely. As a result, brand owners should be wary of trying to define colour marks too broadly. Gemma Boucher gboucher@withersrogers.com Image 2: the successfully registered Red Bull mark