Color Marks – ECJ sets out details on 24 March 2021
I. General facts on color marks
Color marks are marks that consist either of one color only or of a combination of colors (without outlines). As with all forms of trademarks, distinctiveness is required for the goods and services claimed.
The registration of a color mark is therefore only possible in exceptional cases, as there is a great interest of the public in the continued possible free usability of colors. Therefore, it is necessary that a graphic representation within the meaning of Art. 4 of Regulation No. 40/94 precisely identifies the scope of protection.
This graphical representability is of great importance for color marks. The European Court of Justice (ECJ) has stated in various prior decisions (Sieckmann-, Libertel- and Heidelberger-Bauchemie judgments) that the graphic representability of a trademark is only given if it is sufficiently clear, precise, self-contained, easily accessible, intelligible, and objective.
This means that a color combination mark requires a description of how the colors are arranged spatially including the relation of the colors to each other. A mere juxtaposition of colors, without any reference to shape or contours, suggests that the colors in question may take different forms, so that the characteristics of accuracy and uniformity required by Art. 4 of Regulation No. 40/94 are not satisfied.
It was these requirements for graphic representation in conjunction with a description that were the focus of the ECJ's decision Case T‑193/18 of 24 March 2021.
II. Background of the case
In 2008, the claimant, Andreas Stihl AG &Co. KG, applied to the European Intellectual Property Office (EUIPO) for a color trademark as a Community trademark No. 007472723 in class 7 „chainsaws “. It is a composition of the colors orange and gray in a certain arrangement. Subsequently, in 2015, the Giro Travel Company filed an application for a declaration of invalidity of the disputed mark, which was rejected. The intervener filed an appeal against this decision, which was granted.
The action brought by Andreas Stihl AG & Co. KG at the ECJ is directed against this annulment.
The issue was whether the representation of a color mark consisting of a vertical or horizontal division of two equal blocks of color could show a systematic arrangement, provided that the subject matter of protection was specified by a description.
The combination of colors consists of orange (RAL 2010) and gray (RAL 7035) and provided the following description: "The color orange is applied to the top of the body of the chainsaw and the color gray is applied to the bottom of the body of the chainsaw.”
III. The Decision of the EJC
First, the ECJ found that in the present case, the graphic representation, in conjunction with the accompanying description, did not result in a mere juxtaposition of two or more colors without shape or contours and without systematic arrangement.
The colors forming the mark at issue do not take ‘all conceivable shapes’ in such a way as to imply that the mark in question lacks the precision and uniformity required by Art. 4 of Regulation No. 40/94. The accompanying description makes it clear that the mark takes the shape of a chainsaw housing, which can be visibly divided into two parts, an upper and a lower.
Moreover, the average consumer rarely can directly compare different brands of chainsaws. He must rely on the imperfect image in his memory. Therefore, when buying, the consumer only recognizes a chainsaw housing with two parts, namely the upper one in orange color and the lower one in gray color - regardless of the exact shape of the housing.
As a result, the ECJ ruled that the unity and precision of the trademark representation is given by the description and annulled the declaration of invalidity of the Second Board of Appeal of the EUIPO.
It is rather difficult to receive protection of an abstract color mark at the EUIPO. In Addition, it is rare that an invalidity action is filed once a color mark is registered. Consequently, it is of significance that the ECJ actually upheld the registration of the color mark and gave further guidance for applicants regarding the issues relating to distinctiveness and the description of the mark.
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