In the final instalment of Red Bull’s long-standing efforts to register its combination of the colours blue and silver as a trade mark for “energy drinks”, the CJEU has upheld the General Court's finding that the trade mark was not valid, dismissing Red Bull's appeal.
As we discussed in our alert on the day of the decision, the case confirms a high bar for protection of colour combination marks, which often form an important part of a brand strategy. In particular, brand owners who seek to register a colour combination as a trade mark should ensure any description and representation conveys a predetermined and uniform arrangement to stand a chance at maintaining a validly registered EU trade mark.
When seeking to register a colour combination as a trade mark, it is advisable to refer to the Pantone colour ID and to consider including a description which communicates the clear and precise arrangement of the colours as intended to be used. Creating a description that is sufficiently clear and precise may mean that the colour combination trade mark is narrow in its scope of protection, but this may be preferable to obtaining no protection at all. Whilst a description remains optional, in some cases, omitting a description will not serve to make the arrangement of colours more clear and precise.
The story may be over for Red Bull's EU application for the blue and silver colour combination trade mark in its current form but there is nothing to prevent it filing a new application with an improved description, taking into account the lessons learned from this attempt.
We previously reported in 2017 that the General Court had decided that the blue and silver colour combination claimed in Red Bull’s two registered trade marks lacked sufficient clarity and precision to be validly registered as a trade mark.
Red Bull’s two EU trade mark registrations for its blue and silver colour combination included the descriptions “The ratio of the colours is approximately 50%–50%” and that the colours were to be “applied in equal proportion and juxtaposed.”
The Cancellation Division declared the two trade marks invalid as they lacked the precision and uniformity required to function as trade marks because the descriptions allowed for numerous combinations. The First Board of Appeal and subsequently the General Court both upheld this finding.
Grounds of Appeal
Red Bull relied on a number of grounds in its appeal to the CJEU, including the following:
Breach of principles of equal treatment and proportionality
Red Bull argued that the General Court had treated colour combination trade marks unequally and disproportionately compared to other types of marks. The CJEU decided that the General Court had correctly applied case law relating to "the requirement of the colours’ availability" to avoid unduly restricting the availability of colours for other traders. It said it was “clearly necessary” that a combination of colours must exhibit a systematic arrangement in a predetermined and uniform way.
Infringement of the EU Trade Mark Regulation and misinterpretation of case law
Red Bull claimed that the General Court had misinterpreted case law by deciding that colour combination marks must specify the spatial arrangement of colours. The CJEU said that it was incompatible with case law and the EU Trade Mark Regulation for a trade mark registration to allow a "plurality of reproductions" that are not determined or uniform. The CJEU held that a description must be consistent with the graphic representation of a trade mark and not give rise to doubts as to the subject matter and scope of protection.
The CJEU also dismissed Red Bull's arguments based on a breach of the principle of legitimate expectations, proportionality, and infringement of procedural rules.