The route to registration for a sign is made up of several steps including an application to register it as a trademark. And within this application, and in order for it to be registered as a trademark, it must comply with a number of statutory rules.
If the most frequently occurring trademarks are “traditional” words, figurative and figurative marks with word elements, then a sign used in trade to identify the origin of products or services (the basic definition of a trademark) can also consist of non-traditional marks.
Without being too exhaustive, a list of “non-traditional” trademarks will include color marks, shape trademarks, sound marks, pattern marks, position marks, motion marks, multimedia marks or even hologram marks. In this article, we will focus on color and follow it with a series of articles on the other forms of non-conventional trademarks.
In 2017, the graphical representation requirement was no longer required and the European Parliament and Council made it possible for would-be owners to obtain trademark protection for these new types of trademarks without having to produce graphical representation of the marks. A big win for brand owners wanting to expand their brand protection.
New Filing Formats – IP Offices Adapt
As a result of the Amending Regulation (EU) 2015/2424), IP Offices have configured their electronic filing application system so that new formats can be accepted and submitted. Therefore, filing an EU trademark is now possible for large categories of trademarks (shape mark, shape mark containing word elements, position mark, pattern mark, color (single) mark, color (combination) mark, sound mark, motion mark, multimedia mark) :
However, these signs must be capable of distinguishing the goods or services of one undertaking from those of another undertaking and represented on the Register of the Offices in a manner that enables the competent authorities and the public to determine the clear and precise subject of the protection afforded to its proprietor (excluding purely abstract concepts or ideas).
To be eligible for registration and constitute a trademark, the three conditions (being a sign, being capable of distinguishing the goods or services of one undertaking from those of others and being capable of representation of the register) might require a closer examination for each type of non-traditional trademark.
In this first article, in our series on non-traditional trademarks, we will explore the challenges associated with the filing and registration of color marks.
Definition of a color mark/Representation of the sign
Color marks are either single color marks without contours or a combination of colors without contours. The following EUTM registrations illustrate the specific requirements for the graphical representation of these signs not linked to a shape :
As above, a single color mark requires a reproduction of the color and a reference to a generally recognized color mode.
As above, a color combination mark requires a reproduction of the color combination that shows the systematic arrangement of the color combination in a uniform and predetermined manner, a reference to a generally recognized color mode and in option a description detailing the systematic arrangement of the color.
The notion of ‘color combination in a uniform and predetermined manner’ is a reference to case law of the CJEU (CJEU, 24 June 2004, C-49-02, Heidelberger Bauchemie, ECLI:EU:C:2004:384 / CJEU, 29 July 2019, C-124/18, Red Bull, ECLI:EU:C:2019:641).
Should the reference to two or more colors in an application for ‘every conceivable form’ be allowed, the precise scope of the registration would remain unclear and the lack of precision and clarity would also permit a plurality of reproductions (or different variations) which are neither determined in advance nor uniform.
Protection for a specific combination of colors as a sign can also be filed by indicating how the colors will be applied to the goods concerned (the shape not being part of the subject matter of the protection sought).
Nevertheless, even with the possibility of adding such a description, the objections raised against the following applications for color mark in relation to services of rental of e-scooters or sanitizing wipes demonstrate that only color combinations departing significantly from the norms or customs of the relevant sector will mature into registrations without objection raised for a sign devoid of any distinctive character.
Distinctiveness of Color Marks
Another hurdle for the registration as a trademark of colors per se is indeed the fact that color or combination of colors are often considered as a way of increasing the attractiveness of a product but color itself is not normally inherently capable of distinguishing the goods of a particular undertaking, consumers not being in the habit of making assumptions about the origin of goods bases on their color or the color of their packaging.
From an economic point of view, a monopoly on limited available colors would create unjustified monopoly and competitive advantage for single traders (See Libertel case : CJEU, 6 May 2003, C-104/01, Libertel, ECLI:EU:C:2003:244).
Therefore, many trademark applications for single colors are refused based on absolute grounds for lack of distinctive character. Very limited and exceptional circumstances will convince the Examiners that the color mark is unusual in relation to the specific goods or services applied for.
Considering filing the application for a limited scope of goods or services and for a specific market is recommended, demonstrating – when applicable – that the mark applied for has acquired distinctive character through use.
In the case of a color combination, a refusal can only be based on specific facts or arguments, and where such specific arguments for refusal are not established, the mark must be accepted. If one of the two colors is either the commonplace color for the product or the natural color of the product, that is to say, a color is added to the usual or natural color of the product, an objection applies in the same way as if there were only one color.
On the basis of the aforementioned criteria and guidance to support applicants seeking to file color combination marks, the EUIPO clearly excludes the following marks (See EUIPO Guidelines – Part B Examination – Section 4 Absolute grounds for refusal – Chapter 3 Non-distinctive trade marks):
- In many instances, a color would merely be a decorative element of the goods or comply with the consumer’s request (e.g. colors of cars or T-shirts), irrespective of the number of colors concerned.
- A color can be the nature of the goods (e.g. for tints).
- A color can be technically functional (e.g. color red for fire extinguishers, various colors used for electric cables).
- A color may also be usual (e.g. again, red for fire extinguishers, yellow for postal services in many countries).
- A color may indicate a particular characteristic of the goods, such as a flavor (yellow for lemon flavor, pink for strawberry flavor).
- A color combination should also be refused if the existence of the color combination can already be found on the market, in particular if used by different competitors (e.g. the Office proved that the color combination red and yellow is used by various enterprises on beer and soft drink cans).
Categorization of marks establishes the legal requirements for each type of mark and helps the IP Offices to understand what the applicant is trying to register.
Common practices (CP11) in the framework of the European Union Intellectual Property Network for examination of formal requirements and grounds for refusal for non-conventional trademarks provide guidance when evaluating the registrability of these signs.
Color marks may constitute valid trademarks but their representation on the Register and their capacity to distinguish the goods/services of one undertaking from those of another impose strict and stringent conditions for obtaining trademark protection referring to the category of color single or combination mark.
Jérôme Coulonvaux – Intellectual Property Attorney