Are Colours Worth Protecting?
An Examination of Abstract Colour Marks’ Scope of Protection
Master‟s thesis within Business Law
Author: Jennie Nilsson
Tutor: Marie Larsson Linton
Master‟s Thesis in Business Law
Title: Are Colours Worth Protecting? – An Examination of Abstract Colour Marks‟ Scope of Protection
Author: Jennie Nilsson
Tutor: Marie Larsson Linton
Date: 2009-12-22
Subject terms: Trade marks, colour marks, abstract colours, scope of protection, infringement, unconventional trade marks, non-traditional trade marks
Abstract
In the search for companies to distinguish themselves from the mass, so called non-traditional trade marks have become increasingly popular, and in particular colour marks. It is now clear that abstract colour marks can be registered as trade marks, and the number of registered colour marks has in-creased considerably in recent years. However, it remains a lot more uncer-tain, mainly due to lack of case law, what the extent of colour marks‟ scope of protection is. Are colours actually worth protecting? The purpose of this thesis is to examine the scope of protection of registered abstract colour marks from an EU perspective. Through this examination it will also be es-tablished whether colours are worth protecting.
The essential function of trade marks is to indicate the origin of products. Signs that are capable of being represented graphically and capable of dis-tinguishing goods and services from one undertaking from those of other undertakings can be registered as trade marks. Colours can fulfil these crite-ria in certain circumstances, however, colours can practically never have distinctive character per se. Instead, they must have acquired distinctive character through use. Since it is quite difficult to register colour marks, a colour mark proprietor should be prepared to have the validity of his trade mark challenged if he issues proceedings for infringement.
There are a few national cases from EU Member States that have concerned infringement of colour marks, and in all of these the plaintiff was successful in claiming infringement. Through the decisions in these cases, general legal principles and statements made in literature, the scope of protection of col-our marks has been examined. Infringement of a colcol-our mark occurs in three different situations: where there is likelihood of confusion, where there is double identity and where there is dilution of a trade mark with a reputation. Some of the most important findings are that confusingly similar colours clude adjacent shades, but in order to prove likelihood of confusion, the in-fringing colour must probably be perceived by the public as an indication of origin and other signs that appear together with the colour must probably be taken into account, which limits the scope of protection to some extent. However, since colour marks must almost always have acquired distinctive character through use, consumers are used to perceiving that colour as a trade mark in relation to those types of goods/services, and are therefore
more likely to do so also when the colour is used by the third party. Fur-thermore, there have to be an individual assessment in each case in order to determine whether surrounding signs exclude a likelihood of confusion, where all factors should be considered, including the distinctiveness of the colour mark and how clear and prominent the other signs are.
In situations of double identity, the infringing sign does not have to be used as a trade mark, which is advantageous for colour mark owners. Further-more, identical colours can possibly include other shades if they are so simi-lar that the difference is barely perceptible in a direct comparison.
Colour marks can often qualify as trade marks with a reputation, since the assessment of whether trade marks have a reputation is similar to the as-sessment of whether trade marks have acquired distinctive character through use. Trade marks with a reputation has an extended protection meaning that if a third party uses a sign that is identical or similar to a trade mark with a reputation, and that use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark, then that use constitutes infringement. This applies both in relation to identical, simi-lar and dissimisimi-lar products, however, it will probably only apply in relation to identical or similar products when it comes to colour marks, due to the extensive use of colours in the market. The extended protection could be relevant in particular in situations where likelihood of confusion cannot be proven, because the public does not perceive the infringing sign as a trade mark or because of surrounding prominent signs.
This examination shows that the scope of protection of colour marks is not great, it has some weaknesses. However, it is definitely not worthless either, which clearly shows in the fact that the plaintiffs were successful in claim-ing infrclaim-ingement in all of the infrclaim-ingement cases. By registerclaim-ing a colour as a trade mark, a company can to some extent stop others from using the same or similar colour, and it will also most likely have a discouraging effect. However, some carefulness should still be applied in relation to colour marks, since this is still a very new phenomenon and additional case law can take another direction. But considering how the situation looks today, col-ours are worth protecting as trade marks.
Table of Contents
List of Abbreviations ... iv
1
Introduction ... 1
1.1 Background ... 1
1.2 Purpose and delimitation ... 2
1.3 Method and material ... 3
1.4 Outline ... 4
2
Colour as a trade mark ... 5
2.1 Definition of trade mark ... 5
2.2 Function of trade marks ... 5
2.3 Abstract colour as a registered trade mark ... 7
2.3.1 What are abstract colour marks? ... 7
2.3.2 Difficulties with colours as trade marks ... 7
2.3.3 Can colours be registered as trade marks? ... 8
2.3.3.1 According to regulations ... 8
2.3.3.2 According to case law ... 9
3
Requirements for registering a colour as a trade
mark ... 12
3.1 Legal requirements ... 12
3.2 Constituting a sign ... 12
3.3 Graphic representation ... 12
3.4 Distinctive character ... 14
3.4.1 Distinctive character per se ... 14
3.4.1.1 Introduction ... 14
3.4.1.2 Can colours have distinctive character? ... 15
3.4.1.3 Competition considerations ... 15
3.4.1.4 Other relevant considerations ... 16
3.4.1.5 Conclusions ... 18
3.4.2 Distinctive character through use... 18
3.4.2.1 Introduction ... 18
3.4.2.2 Secondary meaning and competition aspects ... 18
3.4.2.3 Numerical and geographical extent of recognition ... 19
3.4.2.4 Effects of other marks ... 20
3.4.2.5 Evidence of acquired distinctiveness ... 21
3.4.2.6 Conclusions ... 22
3.5 Invalidation of a registered trade mark ... 22
4
Registered colour marks’ scope of protection ... 23
4.1 Introduction ... 23
4.2 Definition of infringement ... 23
4.3 Relevant case law ... 24
4.3.1 Introduction ... 24
4.3.2 The BPcase ... 24
4.3.3 The Deutsche Telekomcases ... 25
4.3.4 The Milkacase... 25
4.3.5 The Veuve Cliquotcase ... 25
4.4 Use as a trade mark ... 26
4.4.1 General assessment ... 26
4.4.2 Applied to colour marks ... 28
4.5.1 General assessment ... 30
4.5.2 Applied to colour trade marks ... 32
4.5.3 Effect of other marks ... 35
4.6 Double identity ... 38
4.6.1 General assessment ... 38
4.6.2 Applied to colour marks ... 38
4.7 Trade marks with a reputation ... 39
4.7.1 General assessment ... 39
4.7.2 Applied to colour marks ... 42
5
Conclusion ... 44
Appendix
Appendix 1 – Confusingly similar colours ... 53 Appendix 2 – Identical colours ... 54
List of Abbreviations
AIPPI Association Internationale pour la Protection de la Propriété Intellectuelle
BGH Bundesgerichtshof
CFI Court of First Instance
CTM Community Trade Mark
CTMR Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark
EC European Community
ECJ European Court of Justice
E.I.P.R. European Intellectual Property Review
EU European Union
IIC International Review of Intellectual Property and Competi-tion Law
I.P.Q. Intellectual Property Quarterly
NJA Nytt juridiskt arkiv (New Legal Archive – the Official Jour-nal for publication of cases from the Swedish Supreme Court) OHIM Office for Harmonization in the Internal Market (Trade
Marks and Designs)
Prop. Proposition (Government bill)
SOU Statens offentliga utredningar (Swedish Government Official Reports)
1
Introduction
1.1
Background
Trade marks are extremely important in the market today, both for consumers in order for them to find what they seek amongst the huge amount of goods and services offered on the market, and for companies in order for them to identify and distinguish them-selves from the mass. In fact, the most important asset for many companies is their trade marks.1 As an example it could be mentioned that Coca-Cola, which is the most valu-able brand in the world, is worth 68,734 ($m).2 Therefore it can be important to register trade marks in order to gain exclusive rights to use them. The exclusive right applies in relation to the goods or services for which the mark is registered.3 Furthermore, a trade mark registration is valid in the country were registration is sought.4 Thus, if someone wants to have exclusive rights to a trade mark in more than one country, they have to apply for registration in all of those countries. However, today it is also possible to ap-ply for a Community Trade Mark (CTM), which is valid throughout the European Un-ion (EU).5
Trade marks have traditionally consisted of words and logos, and those are still the most common types of trade marks. However, in the search for companies to further distin-guish themselves, so called non-traditional or unconventional trade marks have become more important in the market. The non-traditional trade marks consist for example of three dimensional marks, sound marks, olfactory marks and colour marks.6 For instance, the Coca-cola company has registered the special shape of their bottles as a trade mark and Metro-Goldwyn-Mayer Lion Corporation has registered the sound of a lion roaring as a trade mark.7
The non-traditional trade mark that has become most popular, however, is colour marks. There are more than 4 900 registered Community colour trade marks and more than 1 500 of these were registered in 2009 (however, it is unclear how many of these consti-tute abstract colour marks). That makes colour marks the third most common trade mark type, after word marks and figurative marks.8 These statistics also show that
1 Levin, Lärobok i immaterialrätt, p. 361.
2 Interbrand, Best Global Brands,
http://www.interbrand.com/best_global_brands_intro.aspx?langid=1000, accessed 2009-12-04.
3 Articles 1 and 5 of the Directive 2008/95/EC of the European Parliament and of the Council of 22 Octo-ber 2008 to approximate the laws of the MemOcto-ber States relating to trade marks and Articles 1 (1) and 9 of the Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark. 4 Article 1 of the Directive 2008/95/EC of the European Parliament and of the Council of 22 October
2008 to approximate the laws of the Member States relating to trade marks.
5 Article 1 (2) of the Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark.
6 Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 15. 7 CTM no 002754067 and CTM no 005170113.
8 OHIM, SSC009 – Statistics of Community Trade Marks 2009, p. 32,
our marks are becoming increasingly popular. As will be explained in more detail later on in this thesis, it is nowadays a fact that colours can be registered as trade marks and there is also quite a lot of case law that explains in what circumstances a colour can constitute a trade mark. What remains a lot more uncertain, mainly due to the lack of case law, is the scope of protection afforded to colour marks.9 There have been a few at-tempts in literature to speculate in different issues of the scope of protection.10 How-ever, no attempt of a more complete examination has been found by this author. Does the registration of a colour mark actually provide any protection and are colours there-fore actually worth protecting as trade marks? Considering the large increase in registra-tions of colour marks, this is an important question to address. The owners of colour marks need to know the extent of their exclusive rights and competitors need to know if they might be infringing a registered trade mark.
1.2
Purpose and delimitation
The purpose of this thesis is to examine the scope of protection of registered abstract colour marks from an EU perspective. Through this examination it will also be estab-lished whether colours are worth protecting.
The thesis deals with abstract colour marks. Other kinds of trade marks that include col-ours will not be examined, for instance colour marks that are tied to objects or have fixed contours. Furthermore, even though colour marks have some similarities to other unconventional marks, this thesis only considers colour marks, since the subject of the thesis otherwise would be too extensive.
Moreover, the purpose of the thesis is to examine the scope of protection of colours marks, not to examine the difficulties surrounding the registration of colour marks. These difficulties will be described to some extent since they affect the assessment of the scope of protection and since they can be the cause of the invalidation of a colour mark, which is also an aspect of a trade mark‟s scope of protection. However, the diffi-culties will not be fully examined.11
It is assumed that the reader of this thesis has some basic knowledge about both intellec-tual property law and European Community (EC) law. The thesis will therefore, for in-stance, not explain the general relationship between EC law and national law. Further-more, only the trade mark law provisions that are relevant to this thesis will be dis-cussed, hence, not all absolute grounds for refusal will be described.
As stated in the purpose, this thesis is written from an EU perspective. This is appropri-ate since the national trade mark laws within the EU have been harmonized and since it is now common to register a CTM instead of national trade marks.12 However, trade mark laws outside the EU will not be examined, since such an examination would be too time-consuming.
9
Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 243. 10 See mainly Lunell, Okonventionella varumärken: form, färg, doft, ljud.
11 See Lunell, Okonventionella varumärken: form, färg, doft, ljud, for a more exhaustive examination on the difficulties surronding the registration of colour marks.
Finally, trade marks can earn protection to some extent through market law, as well as trade mark law.13 However, it is only the protection offered by trade mark law that will be examined in this thesis due to limitation in time.
1.3
Method and material
The method used in this thesis is based on a legal problem solving approach. By using different sources of law, the aim of the thesis is to come as close to a solution to the le-gal problem as possible. The sources of law are analysed and compared in order to pre-sent arguments in favour of and against alternative solutions to the problem. By this method, the solution that is most likely to be legally sustainable can be identified. The material used in this thesis has been collected by a traditional legal method. Thus, legal texts, preparatory acts, case law and literature are studied. As was stated in section 1.2, this thesis will have an EU perspective. All the Member States of the EU have their own national trade mark laws, however, these have been harmonised by the Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to ap-proximate the laws of the Member States relating to trade marks (from here on the “Trade Mark Directive”). There is also an EC Regulation, the Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (from here on the “CTMR”), that regulates the CTMs. The CTMR mainly has the same wording as the Trade Mark Directive, and therefore, at least theoretically, the Trade Mark Directive, the CTMR and the national laws of the Member States all contain basically the same provisions. Because of this, the basis of this thesis will be the legal text in the Trade Mark Directive and in the CTMR. However, reference to the corresponding provisions in the Swedish Trade Mark Act (Varumärkeslagen14) will be made when appropriate. Preparatory acts do not have the same legal value in EC law as they have in Swedish law. EC preparatory acts are therefore only used to a very limited extent in this thesis. Swedish preparatory acts are only used when the legal position in Sweden is especially discussed.
A very important legal source in EC law is case law. Preferably, case law from the European Court of Justice (ECJ) is used to interpret the legal texts. When case law from the ECJ is not available, case law from the Court of First Instance (CFI) and also case law from the Office for Harmonization in the Internal Market (OHIM) is used as guid-ance. Since the EC case law on certain aspects of colour marks is still very limited, na-tional case law from EU Member States is also used as guidance. In addition, some case law from the United States is referred to, since the United States was early with accept-ing colour marks. However, this case law is just used in a servaccept-ing purpose, and there is no complete examination of the legal situation in the United States.
Finally, as a result of the lack of case law within this area of law, literature is an impor-tant legal source in this thesis. Both Swedish, European and international literature is analysed in order to gain a complete picture of the different opinions in the matter. Some books are used but most of the literature consists of articles, mainly because
13 See for example Article 10 of the Swedish Marketing Practices Act, Marknadsföringslag (2008:486). 14 Varumärkeslag (1960:644).
our marks are a relatively new phenomenon. The articles have been collected from re-spected journals.
1.4
Outline
Chapter one has provided the reader with a background to the issue, and the purpose and delimitations of the thesis have been clarified. Furthermore, the method and mate-rial used in the thesis have been described. Now, the outline of the thesis is explained in order to make the reading of it easier.
In chapter two there will be an introduction to colour trade marks in order to give the reader some background information, necessary to understand the issue. The chapter will clarify the definition of trade marks, discuss the purpose of trade marks and finally the different opinions concerning whether an abstract colour can constitute a trade mark will be discussed.
Chapter three deals with the requirements a colour must meet in order to constitute a trade mark. These requirements are relevant to defining the scope of protection afforded to colour marks and they are therefore necessary for the reader to understand.
In chapter four, the main issue will be examined, namely the scope of protection of col-our marks. The different infringement situations stated in the law will be discussed from the perspective of colour marks and also some other issues relevant to defining the scope of protection.
Finally, in chapter five, there will be a summary of the analysis made throughout the thesis and a conclusion will be given in order to fulfil the purpose of the thesis.
2
Colour as a trade mark
2.1
Definition of trade mark
Article 4 of the CTMR (corresponding provisions are found in Article 2 of the Trade Mark Directive and in Article 1 of the Swedish Trade Mark Act) states that
‘[a] Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of dis-tinguishing the goods or services of one undertaking from those of other undertakings.’
Consequently, there are three criteria that a mark must meet:
the mark must be a sign;
the mark must be capable of being represented graphically;
the mark must be capable of distinguishing the goods or services of one
under-taking from those of other underunder-takings.15
In order for a trade mark to be registered it must also pass the absolute grounds for re-fusal. Article 7 (1) of the CTMR and Article 3 (1) of the Trade Mark Directive (corre-sponding provisions are found in Article 13 of the Swedish Trade Mark Act) state that the following shall not be registered:
(a) signs which do not constitute a trade mark;
(b) trade marks which are devoid of distinctive character;
(c) trade marks which are indicative of the characteristics of the goods or services; (d) trade marks which have become customary in the current language.
There are also a number of other absolute grounds for refusal, but those will not be rele-vant for the continuance of this thesis.16
Furthermore, it is important to understand that trade marks are registered in respect of certain goods or services for which the marks are used, or will be used. Trade marks have to be registered in different classes of the trade mark register, which represents dif-ferent types of goods and services. The classification which is used derives from the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (from here on the “Nice Agreement”), which currently contains 45 classes. The more classes an applicant apply to register in, the more expensive will the registration be.17
2.2
Function of trade marks
In order to understand the legislation regulating trade marks, it is important to know why there are laws protecting trade marks in the first place. It is important to understand the function of trade marks. The ECJ has stated that the main function of trade marks is
15 MacQueen, Waelde and Laurie, Contemporary Intellectual Property: Law and Policy, p. 567.
16 See Article 7 of the CTMR, Article 3 of the Trade Mark Directive and Article 13 of the Swedish Trade Mark Act.
to indicate the origin of goods and services, enabling consumers to distinguish between products of one undertaking from those of another.18 Trade marks therefore function as a “badge of origin”.19
In other words, trade marks operate in the public interest by communicating information to consumers, allowing them to make informed purchasing choices.20
Another function of trade marks, which really is a sub-set of the main function, is to in-dicate the quality of the products sold under a certain mark.21 According to the Advo-cate General Jacobs in case C-10/89 SA CNL-SUCAL NV v HAG GF AG, the consumer is interested in knowing the commercial origin because of an assumption that goods and services from the same origin will have the same quality. The trade mark protection sys-tem therefore rewards undertakings that offer high-quality products.22
Furthermore, trade marks also function as a means of advertising and as an investment vehicle. A great amount of time, effort and money are invested in making the consumers aware of a certain mark. By building consumer awareness, traders are hoping that the mark itself will be selling the product. Consumer awareness can also create a great value in the mark, allowing it to be licensed, be the subject of a security, and so forth.23 However, the advertising and investment functions have been considered to be merely derivates of the origin function.24 The primary function of trade marks is therefore to identify the origin of the product, while the quality, advertising and investment func-tions are considered to be sub-sets of the primary function.
There are also some ethical arguments used to justify the legal protection of trade marks, in particular arguments concerning fairness and justice. A common phrase to ex-plain this argument is that persons should not be allowed „to reap where they have not sown‟.25
This justification has mainly been used in relation to more extensive protec-tion, for instance in relation to the broader protection offered to trade marks with a re-pute, which are protected in some situations even where there is no consumer confusion as to the origin of the product.26 This will be further explained in section 4.7
18 C-206/01 Arsenal, para. 48. 19
MacQueen, Waelde and Laurie, Contemporary Intellectual Property: Law and Policy, p. 542. 20 Bently and Sherman, Intellectual Property Law, p. 718.
21 MacQueen, Waelde and Laurie, Contemporary Intellectual Property: Law and Policy, p. 543.
22 Opinion of the Advocate General Jacobs in case C-10/89 SA CNL-SUCAL NV v HAG GF AG, para. 72. 23
MacQueen, Waelde and Laurie, Contemporary Intellectual Property: Law and Policy, p. 544.
24 Opinion of the Advocate General Jacobs in case C-337/95 Parfums Christian Dior SA and Parfums
Christian Dior BV v Evora BV, para. 42.
25 Bently and Sherman, Intellectual Property Law, p. 719. 26 Bently and Sherman, Intellectual Property Law, pp. 719–720.
2.3
Abstract colour as a registered trade mark
2.3.1 What are abstract colour marks?
There are mainly two ways of protecting colours as trade marks, besides the situation when the colour is protected indirectly as a part of a figurative mark: as a concrete
col-our mark and as an abstract colcol-our mark. In a concrete colcol-our mark, the colcol-our is bound
to a specific form. This includes the situation where protection is sought for a colour applied to an object.27 For instance, in one case the applicant sought to register as a CTM the „[c]olour cobalt blue, when applied to the entire visible surface of a bottle con-taining water‟, even though no exclusive rights were sought for the shape of the bottle.28
An abstract colour mark on the other hand, is not tied to a particular contour.29 It is the mere colour, the colour per se, that is protected, and it can therefore be used in an unlimited number of forms. This makes the abstract colour mark unique in comparison to the other kinds of trade marks, including the other unconventional marks.30 Naturally, the colour must be placed on some form of object, and it can therefore be argued that the mark becomes a concrete appearance at the time the consumers see it. However, in contrast to concrete colour marks, the owner of an abstract colour mark can use his col-our in a number of different concrete appearances, on different objects and in different ways.31 From here on, when the word colour mark is used, it is an abstract colour mark that is referred to, unless something else is expressly stated.
2.3.2 Difficulties with colours as trade marks
Colour is the result of radiation of light on matter.32 How a colour is experienced by a certain person depends on a number of different factors. The main factors relate to the situation in which the colour appears, including object, surface, lighting and back-ground. There are also factors relating to the individual that affects the experience of the colour, for instance gender, age, personal history, culture and personality. To the list can also be added factors specific for the situation, like mood, illness and tiredness.33
Colours usually catch the attention of the consumers quickly. Colours are said to be ca-pable of conveying certain associations of ideas and of producing feelings, however their capability of communicating specific information is weak, and that capability is essential in order for a sign to function as a trade mark. What creates even more diffi-culties is that abstract colour marks can be used in an unlimited way, and the commer-cial impression of a colour differs depending on how the colour is used.34 In connection with this, it is important to consider the principle of certainty. According to the afore
27 Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 123. 28
R 5/1999-3 (Cobalt blue), para. 2.
29 Ströbele, The Registration of New Trade Mark Forms, p. 172.
30 Schulze, Registering Colour Trade Marks in the European Union, p. 57.
31 Caldarola, Questions Relating to Abstract Colour Marks: Recent Developments in Germany, p. 249. 32
Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 125.
33 Hård et al., Färgantologi Bok 2 Upplevelse av färg och färgsatt miljö, p. 41. 34 Lunell, Okonventionella varumärken: form, färg, doft, ljud, pp. 125–126.
mentioned principle, the content of a trade mark application must be established un-equivocally from the beginning, in other words, it must be clear from the application what the subject matter of protection is.35
2.3.3 Can colours be registered as trade marks?
2.3.3.1 According to regulations
The Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement), to which the EC is a party, lists in Article 15 examples of signs that may be registrable as trade marks. Combinations of colours are listed as one of those examples, but single colours are not mentioned. Article 2 of the Trade Mark Directive and Article 4 of the CTMR, on the other hand, does not mention single colours or colour combina-tions amongst the examples of signs that can constitute trade marks (see citation in sec-tion 2.1). However, according to Recital 7 of the Preamble to the Trade Mark Directive, the list of signs constitutes examples, and it can therefore be assumed that the list is not intended to be exhaustive.36 There have also been statements made by organs within the EU that the articles are not meant to exclude colours or colour combinations as registra-ble signs.37
The national laws of the Member States differ concerning the registrability of colour marks.38 In some countries, including France, Italy and Germany, it is expressly stated in the trade mark laws that colours or colour combinations can constitute registrable trade marks.39 In contrast, the law in some countries, including Spain and Portugal, has earlier excluded abstract colours from signs registrable as trade marks, and only allowed colours delimited by a given form.40 However, the national laws in most Member States today have the same arrangement as the Directive, with a non-exhaustive list of signs which are registrable as trade marks, but where colours or colour combinations are not mentioned.41 This is also the form that Sweden has chosen. Article 1 of the Swedish Trade Mark Act lists some examples of signs that can constitute trade marks, but col-ours are not included in that list. Although, it was stated in the preparatory acts to the Swedish Trade Mark Act that the list is not exhaustive and that the word “signs” in the
35 R 7/97-3 (Orange), para. 10.
36 Schulze, Registering Colour Trade Marks in the European Union, p. 55. 37
Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 127.
38 Salomäki, Nya typer av varumärken – registrerbarheten av färg, lukt och ljud som EG-varumärken, p. 14.
39 See the French Trade Mark Act: Code de la Propriété Intellectuelle (Law No. 92-597 of July 1 1992) Article L711-1, the Italian Trade Mark Act: Royal Decree No. 929 of June 21, 1942 Article 16 and the German Trade Mark Act: Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Markenge-setz) vom 25. Oktober 1994 Abschnitt 1 § 3.
40 See the former Spanish Trade Mark Act: Trademark Law No. 32/1988, of November 10, 1988 Article 11 (1) (g) and the former Portuguise Trade Mark Act: Industrial Property Code (Decree Law No 16/95) Article 166 (1) (d). See further R 122/1998-3 (Wrigley´s Light green), paras. 13–14.
Directive is meant to be interpreted widely. In consequence, colour combinations or even single colours should be able to constitute trade marks.42
2.3.3.2 According to case law
The OHIM first stated that a colour per se could be registered as a CTM in a decision from 1998.43 In a later case the same year the OHIM developed this statement further by arguing that a systematic and teleological interpretation of Article 4 of the CTMR leads to the conclusion that abstract colours are protectable as CTMs and that another conclu-sion would be contrary to the spirit of Community trade mark law.44 Then, in October 1999, Kraft Foods Schweiz Holding GmbH became the first to register a colour as a CTM. It was the colour “lilac/violet” used on the “Milka” chocolate that was regis-tered.45
In 2002, the CFI established that abstract colours and colour combinations can consti-tute CTMs, provided that they are capable of distinguishing the products of one under-taking from those of another.46 Finally, in 2003, the question of a colour‟s registrability was answered by the ECJ in the Libertelcase47. The situation in the main proceedings was that the company Libertel, situated in the Netherlands, had filed an application at the competent authority to register an orange colour as a trade mark for certain tele-communications goods and services. The application contained an orange rectangle as a reproduction of the mark, and the word “orange” as a description. There was no refer-ence to any colour code. The application was refused due to lack of distinctive character and this decision was appealed by Libertel, first to the Hague Regional Court of Appeal (Gerechtshof te‟s-Gravenhage) and then to the Supreme Court of the Netherlands (Hoge Raad der Nederlanden). A number of questions were then referred to the ECJ concern-ing the assessment of distinctive character in relation to sconcern-ingle colours.48 However, the court decided not just to answer the questions referred, but to make a full examination on whether a single abstract colour can constitute a trade mark. First of all, the ECJ es-tablished that in order for a colour to constitute a trade mark, the colour must be a sign, which must be capable of being represented graphically and which must be capable of distinguishing the goods and services of one undertaking from those of other undertak-ings.49 The ECJ then made it clear that under certain circumstances, a single colour can meet these three conditions and therefore an abstract colour is capable of constituting a trade mark.50 Under what circumstances a colour will fulfil these requirements will be examined in chapter three.
42 Prop. 1992/93:48 pp. 70–71. 43 R 7/97-3 (Orange), para. 16. 44
R 122/1998-3 (Wrigley´s Light green), para. 17. 45 CTM no 000031336. 46 T-173/00 KWS Saat, para. 25. 47 C-104/01 Libertel. 48 C-104/01 Libertel, paras. 12–20. 49 C-104/01 Libertel, para. 23. 50 C-104/01 Libertel, para. 42.
However, the Libertelcase only concerned single colours. A judgment on the registrabil-ity of colour combinations waited until 2004 when the ECJ delivered its decision in the
Heidelberger Bauchemiecase51. Heidelberger Bauchemie had applied for registration of the colours blue and yellow as a trade mark in respect of various products used in the building trade.52 As a reproduction of the mark, the application contained a rectangular piece of paper, where the upper half was blue and the lower half yellow. The description of the mark included the following: „[t]he trade mark applied for consists of the appli-cant‟s corporate colours which are used in every conceivable form, in particular on packaging and labels‟.53
The description also included the words “blue” and “yellow” with references to a colour code. The application was refused on the ground that the mark lacked distinctive character, but the decision was appealed before the Federal Pat-ent Court (BundespatPat-entgericht) by Heidelberger Bauchemie. The court decided to stay the proceedings and referred questions to the ECJ concerning whether abstract colours and combinations of colours can constitute trade marks.54 The ECJ referred to its judg-ment in the Libertelcase and established that colour combinations must meet the same three conditions as single colours in order to constitute trade marks.55 Just as with single colours, the ECJ found that colour combinations can meet the three criteria under cer-tain circumstances and that they therefore can constitute trade marks.56 Still, there is a difference between single colours and colour combinations in respect of graphical rep-resentation, which will be explained in section 3.3. Through the ECJ‟s decision in the
Libertelcase and in the Heidelberger Bauchemiecase it is now clear that both single
col-ours and combinations of colcol-ours can be registered as trade marks in certain circum-stances.
In Sweden, the registrability of single colours was first discussed by the Court of Patent Appeals (Patentbesvärsrätten) in 1997. The court established that as a matter of princi-ple, nothing prevents the use of a colour as a trade mark.57 This conclusion was later confirmed by the Supreme Administrative Court (Regeringsrätten).58 The number of colour marks registered in Sweden is nevertheless very low. The first Swedish colour mark was a combination of magenta and grey, registered in 1996 by Deutsche Telekom AG in respect of a number of goods and services mostly concerning telecommunica-tion.59 The first Swedish colour mark concerning a single colour was a certain shade of purple, registered by Löfbergs Lila Aktiebolag in respect of coffee, in 2005.60 Since
51 C-49/02 Heidelberger Bauchemie.
52 C-49/02 Heidelberger Bauchemie, paras. 10–11. 53 C-49/02 Heidelberger Bauchemie, para. 10. 54
C-49/02 Heidelberger Bauchemie, paras. 10–14. 55 C-49/02 Heidelberger Bauchemie, para. 22. 56 C-49/02 Heidelberger Bauchemie, para. 42.
57 Patentbesvärsrätten, case no 95-573 (Court of Patent Appeals in Sweden). 58
Regeringsrätten, case no 5006-5014-1997 (The Supreme Administrative Court in Sweden). 59 Trade mark no 316716.
then, only one more colour mark has been registered in Sweden, a certain shade of or-ange was registered in 2008 by Exte Fabriks AB.61
Finally, it can also be worth mentioning that colour marks are also accepted in the United States. It was established by the U.S. Supreme Court in 1995 in the Qualitexcase that a single colour could be registered as a trade mark.62 However, in the United States, the applications must contain a graphical drawing of the product with a description of the colour and a description of the locations of the colour.63 Because of this it can be ar-gued that abstract colour marks cannot be protected in the United States, only concrete colour marks.64
61 Trade mark no 393645.
62 Qualitex Co. v. Jacobson Products Co., Inc. 514 U.S. 159, 115 S.Ct. 1300, 131 L.Ed.2d 248, 63 USLW 4227, 34 U.S.P.Q.2d 1161, U.S. Cal., March 28, 1995 (No 93-1577).
63 Caldarola, Questions Relating to Abstract Colour Marks: Recent Developments in Germany, pp. 249– 250.
3
Requirements for registering a colour as a trade
mark
3.1
Legal requirements
As stated in section 2.1, there are three criteria that a mark must meet in order to consti-tute a trade mark. Therefore, in order for a colour to consticonsti-tute a trade mark, the colour must be a sign, which must be capable of being represented graphically and which must be capable of distinguishing the goods and services of one undertaking from those of other undertakings.65 In the following it will be examined what is required for each of these three conditions to be satisfied.
3.2
Constituting a sign
The first criterion that a colour must meet in order to constitute a trade mark is that the colour must constitute a sign. That words and graphics can constitute signs is quite ob-vious, but what about colours? The ECJ stated in the Libertelcase that a colour is usu-ally just a property of things and that it cannot be presumed to constitute a sign. How-ever, the court also stated that, depending on the circumstances in which the colour ap-pears, a colour per se may constitute a sign.66 The ECJ then also pointed out in the
Hei-delberger Bauchemiecase that in the assessment of an application for registration it
must be established that the colour or colour combination actually represents a sign in the context in which it is used.67 In other words, according to the ECJ, a colour or com-bination of colours is capable of constituting a sign.
3.3
Graphic representation
The second criterion that a colour must meet in order to constitute a trade mark is that it must be capable of graphic representation. The ECJ explained in the Sieckmanncase68 that the function of the requirement of graphic representability is to „...define the mark itself in order to determine the precise subject of the protection afforded by the regis-tered mark to its proprietor‟ and that the graphic representation „...must enable the sign to be represented visually, particularly by means of images, line or characters, so that it can be precisely identified‟.69 The ECJ also stated that the criteria for “graphic represen-tation” is that the representation is clear, precise, self-contained, easily accessible, intel-ligible, durable and objective,70 the so called “Sieckmann seven” criteria.71
65
C-104/01 Libertel, para. 23. 66 C-104/01 Libertel, para. 27.
67 C-49/02 Heidelberger Bauchemie, para. 24. 68 C-273/00 Sieckmann.
69
C-273/00 Sieckmann, paras. 46–48. 70 C-273/00 Sieckmann, para. 55.
Since colours can be perceived visually, it was considered as obvious that a sample of the colour would be enough as graphic representation before the Libertelcase.72 How-ever, the ECJ stated in the Libertelcase that a sample of colour may deteriorate with time, for example when it is reproduced on paper, and that it therefore is not durable as required by the Sieckmann seven criteria.73 The ECJ further declared that a verbal de-scription of the colour, for example “orange” like in the main proceedings, is formally a graphic representation, since it is composed of words, although it is uncertain whether a verbal description would fulfil the Sieckmann seven criteria. That would have to be de-termined in each individual case.74 However, it has been questioned whether a verbal description could ever satisfy the criteria of “clear” and “precise”, since the number of colour shades existing are so many more than the number of shades that can be de-scribed in words.75 Reference to an international recognised identification code as a graphic representation, alone or in combination with a sample and/or a description, would on the other hand satisfy the Sieckmann seven criteria, according to the ECJ, since such codes are both precise and stable.76 Such international recognised identifica-tion codes are for example RAL, HKS and Pantone, where every colour shade has a specific number.77
Since the Libertelcase there have been some changes though in the requirement for graphic representation, at least concerning Community Trade Marks. The Register of Community Trade Marks is namely kept in electronic form by scanning and electroni-cally storing the graphic representations of trade marks. A sample of colour is therefore durable in contrast to what the ECJ stated in the Libertelcase.78 Rule 3.5 of the Commis-sion Regulation No 2868/95 now therefore states that
‘[w]here registration in colour is applied for, the representation of the mark under paragraph 2 shall consist of the colour reproduction of the mark. The colours making up the mark shall also be indicated in words and a reference to a recognized colour code may be added.’
In other words, there has to be a sample of the colour and a verbal description of the colour but a reference to a colour code is not necessary. A reference to a recognized colour code is however recommended.79
In order to register a combination of colours as a trade mark, the graphic representation must also be „…systematically arranged by associating the colours concerned in a
72 Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 133. 73 C-104/01 Libertel, para. 32.
74 C-104/01 Libertel, paras. 34–35. 75
Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 135. 76 C-104/01 Libertel, paras. 37–38.
77 Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 135.
78 OHIM, Communication No 06/03 of the President of the Office of 10 November 2003, http://oami.europa.eu/en/office/aspects/communications/06-03.htm, accessed 2009-10-01.
79 OHIM, Communication No 06/03 of the President of the Office of 10 November 2003, http://oami.europa.eu/en/office/aspects/communications/06-03.htm, accessed 2009-10-01.
determined and uniform way‟.80 Otherwise the registered colours could be used in all possible different combinations, which would not allow consumers to memorize a cer-tain combination, enabling them to repeat the purchase. Neither would it be possible for authorities, competitors and others to determine the scope of protection of the trade mark.81 A systematic arrangement should include the quantitative relationship between the colours, normally by indicating the percentages of each colour, and the distribution of the colours, consisting of for example stripes or dots. However, some tolerance is necessary, especially concerning to the quantitative relationship.82
3.4
Distinctive character
3.4.1 Distinctive character per se
3.4.1.1 Introduction
The third criterion that a colour must meet in order to constitute a trade mark is that it must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. As stated in section 2.1, Article 7 (1) (b) of the CTMR and Arti-cle 3 (1) (b) of the Trade Mark Directive also prescribe that trade marks which are de-void of distinctive character shall not be registered (corresponding provision is found in Article 13 of the Swedish Trade Mark Act). It was earlier discussed whether these pro-visions constitute two separate tests, meaning that it is possible for a trade mark to be distinctive without being capable of distinguishing goods and services and vice versa.83 This question was considered by the ECJ in the Philipscase84, where the ECJ made it clear that there are no category of trade marks having a distinctive character which are not capable of distinguishing goods and services.85 In other words, being capable of dis-tinguishing the goods or services of one undertaking from those of other undertakings is the same as having distinctive character and the two provisions does not constitute two different tests.
According to the ECJ, in assessing the distinctiveness of a trade mark, reference must be made firstly to the products in respect of which registration is sought and secondly to the perception of the relevant persons. The perception of the relevant persons means „...the presumed expectations of an average consumer of the category of goods or ser-vices in question, who is reasonably well informed and reasonably observant and cir-cumspect‟.86
80 C-49/02 Heidelberger Bauchemie, para. 33. 81 C-49/02 Heidelberger Bauchemie, para. 35. 82
Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 137 and Ströbele, The Registration of
New Trade Mark Forms, pp. 176–179.
83
MacQueen, Waelde and Laurie, Contemporary Intellectual Property: Law and Policy, pp. 578–579. 84 C-299/99 Philips.
85 C-299/99 Philips, para. 39
86 Joined cases C-53/01 Linde AG, C-54/01 Winward Industries Inc. and C-55/01 Rado Uhren AG, para. 41.
3.4.1.2 Can colours have distinctive character?
The question whether colours can have distinctive character was addressed by the ECJ in the Libertelcase. The court first of all established that the capacity of colours to communicate specific information is limited, in particular because of the common use of colours on products and in advertising. However, this does not lead to the conclusion that colours are incapable of having distinctive character. It is possible that a colour in some situations could identify the origin of a product which means that colours may be capable of distinguishing the goods or services of one undertaking from those of other undertakings. By this conclusion, the ECJ could also determine that colours are capable of constituting trade marks as defined in Article 2 of the Trade Mark Directive.87
Concerning the possibility for colours to have distinctive character per se, the ECJ fur-ther stated that the public is not used to perceiving colours as a badge of origin without any graphic or word element, since colours are not normally used as a means of identifi-cation in the market. The ECJ therefore made the conclusion that „…distinctiveness without any prior use is inconceivable save in exceptional circumstances, and particu-larly where the number of goods and services for which the mark is claimed is very re-stricted and the relevant market very specific‟.88 By this statement the ECJ made it theo-retically possible for colours to have distinctive character per se, but made the possibil-ity very limited. The ECJ later repeated these facts in the Heidelberger Bauchemiecase, making it clear that the same considerations apply to colour combinations.89
3.4.1.3 Competition considerations
Another question that was raised in the Libertelcase was whether it is necessary to con-sider the general interest of keeping colours available to all when assessing whether a colour has distinctive character. Firstly, the ECJ established that when the relevant pub-lic is composed of the average consumer, reasonably well-informed and reasonably ob-servant and circumspect, the public rarely gets the opportunity to directly compare products in different colour shades. Because of this, the public is only capable of distin-guishing a limited number of colours, which causes the number of colours available as trade marks also to be limited.90 Consequently, the number of colours available could run out for some products due to a few trade mark registrations. That would have nega-tive effects in a system of fair competition.91 The ECJ therefore concluded that
‘…in assessing the potential distinctiveness of a given colour as a trade mark, regard must be had to the general interest in not unduly restricting 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’.92
87 C-104/01 Libertel, paras. 39–42. 88 C-104/01 Libertel, paras. 65–66.
89 C-49/02 Heidelberger Bauchemie, paras. 37–40. 90
C-104/01 Libertel, paras. 46–47. 91 C-104/01 Libertel, para. 54. 92 C-104/01 Libertel, para. 60.
The ECJ also added that the likelihood of a colour mark to come into conflict with the public interest of not unduly restricting the colours available rises with the number of goods or services for which registration is sought.93 In other words, in theory it should be easier to obtain a colour mark if the number of goods or services for which registra-tion is sought is low.
These considerations of undistorted competition have also been discussed in the case law from OHIM, however its opinion on the matter differ in different decisions. It has been stated that the number of colours are limited and that normally everyone should be allowed to use the colours they wish in connection with their goods or services, which must be taken into account in assessing the distinctiveness of a trade mark.94 However, it has also been stated that there is no need to consider the interest of keeping colours available to all or the possible risk of monopolisation of some colours in assessing the distinctiveness of a trade mark.95 What impact the need for free availability of colours should have in the assessment of a trade mark‟s distinctiveness is therefore a bit unclear and the subject has been disputed in literature.96 Nevertheless, considering the statement cited above, made by the ECJ in the Libertelcase, it seems that the need to leave colours free for others to use at least have some relevance in assessing the distinctiveness of a trade mark. Although it should be noted that the expression used by the ECJ was that of “not unduly restricting” the availability of colours.
3.4.1.4 Other relevant considerations
When applying for a colour mark in relation to goods, distinctiveness can be especially hard to prove. This is due to the fact that the average consumer must perceive the colour as independent in relation to the product, but instead the colour mark can easily be per-ceived as just coloured goods or packages. Even in situations where the colour of goods is used by consumers as a badge of origin it can be questioned whether the consumer does not actually associate the colour with the origin of the product indirectly through a word mark. It can therefore be argued that it is easier for consumers to perceive colours as trade marks in relation to services, since services naturally are colourless.97
Another reason for the difficulties in proving that a colour or colour combination can function as a badge of origin is that colours normally also have several others functions. In some situations colours can have a technical function, either by itself or by indicating certain characteristics of the product. For example, life jackets are often made in orange, since that is a colour that makes the product more visible. Still, the most common func-tion for colours is the decorative funcfunc-tion. Colours are used widely in the marketing of products, both in advertising and on the goods or on the packaging of the goods, in or-der to make them more appealing. The public is therefore accustomed to colours being used as a marketing device, not as trade marks. For a colour to be distinctive, it must
93 C-104/01 Libertel, para. 56. 94
R 122/1998-3 (Wrigley´s Light green), para. 30. 95 R 785/2000-4 (Light green/Leaf green), paras. 10–11.
96 See for example McCutcheon, How Many Colours in the Rainbow? The Registration of Colour per se
under Australian Trade Mark Law, pp. 30–33.
therefore be shown that the public perceives the colour mainly as a badge of origin and not as a decorative or technical element.98
In the case law from OHIM a distinction has been made between different kinds of col-ours. There are the primary colours consisting of red, yellow and blue and other basic colours, for example white, black, green and orange.99 Sometimes the term “signal col-ours” are also used, including the colours red, yellow and green.100
It seems that, ac-cording to the OHIM, primary, basic and signal colours, which are all perceived as common colours, are less likely to have a distinctive character and the need to keep them available for all to use is greater than for more unusual colours.101 However, it has been questioned whether common colours actually are less distinctive than other col-ours. Instead, the important aspect should be whether the colour is unusual compared to the colours normally used in relation to the goods or services.102 It has also been recog-nized in OHIM‟s case law that a colour is capable of being distinctive per se if protec-tion is sought for very specific goods or services with specific customers and the colour is very unusual in the relevant market.103
Furthermore, it has been argued that colour combinations are more likely to be distinc-tive per se than single colours.104 The more colours included in the trade mark, the less is the need to keep the colour combination free for all to use. Colour combinations are also easier to perceive as trade marks. However, considering the ECJ‟s statements in the
Heidelberger Bauchemiecase, it still seems to be very difficult for colour combinations
to have distinctive character per se.105
Finally, it should be noted that trade marks that are descriptive of the goods or services and trade marks that have become customary in the current language shall not be regis-tered according to Article 7 (1) (c) and (d) of the CTMR (Article 3 (1) (c) and (d) of the Trade Mark Directive). These provisions could become relevant also in connection to colour marks. For example, the colour brown would probably be considered to be de-scriptive of chocolate, since the colour indicates a characteristic of the product. The same could be the case if the purpose of the use of a specific colour on specific goods or services is to give the consumer certain associations.106
98
Lunell, Okonventionella varumärken: form, färg, doft, ljud, pp. 142–143.
99 R 282/1999-2 (Orange II), para. 15 and Schulze, Registering Colour Trade Marks in the European
Un-ion, p. 62.
100 R 477/2000-1 (Orange/Light grey), para. 12.
101 Schulze, Registering Colour Trade Marks in the European Union, p. 66. 102 Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 143. 103
R 122/1998-3 (Wrigley´s Light green), para. 21.
104 Salomäki, Nya typer av varumärken – registrerbarheten av färg, lukt och ljud som EG-varumärken, p. 16.
105 Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 154. 106 Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 151.
3.4.1.5 Conclusions
Even though it is theoretically possible for a colour or colour combination to be distinc-tive per se, this possibility is very narrow. In practice, especially concerning single col-ours, the colour must almost always have acquired distinctive character through use in order to be registered as a trade mark.107 This will be further explained in the next sec-tion.
3.4.2 Distinctive character through use
3.4.2.1 Introduction
As stated in the previous section, colours very rarely have a “natural” distinctiveness, although there is another way for signs to be distinctive, namely by acquiring distinctive character through the use made of them. Article 7 (3) of the CTMR and Article 3 (3) of the Trade Mark Directive state that a trade mark which is devoid of distinctive charter, descriptive or customary shall not be refused registration if the trade mark has ac-quired a distinctive character in consequence of the use which has been made of it (cor-responding provision is found in Article 13 of the Swedish Trade Mark Act). After es-tablishing that colours only can be distinctive per se in very special circumstances, the ECJ made it clear in the Libertelcase that colours, just like other trade marks, can be-come distinctive, following the use made of them.108
How to make the assessment of whether a trade mark has acquired distinctive character was to a large part clarified by the ECJ in the Windsurfing Chiemseecase109. The case concerned the company Windsurfing Chiemsee which sold sports wear near the lake Chiemsee. Windsurfing Chiemsee owned a registered figurative trade mark, which in-cluded the word “Chiemsee”, however the word itself was not protected by a registra-tion since the registraregistra-tion authorities considered the word to be an indicaregistra-tion of geo-graphical origin and therefore not registrable. Both Huber and Franz Attenberger were selling sports clothing bearing the designation “Chiemsee”, but depicted in another graphic form. Windsurfing Chiemsee argued that the public was familiar with its desig-nation “Chiemsee” and that Huber‟s and Franz Attenberger‟s use of the name caused a likelihood of confusion, thereby challenging their use of the word. The defendants claimed that the word “Chiemsee” was an indication which designates geographical ori-gin which must remain available to all and therefore cannot be protected.110
3.4.2.2 Secondary meaning and competition aspects
The ECJ established in the Windsurfing Chiemseecase that a geographical name is reg-istrable as a trade mark if it, as a consequence of the use which has been made of it, identifies the origin of the product and thereby distinguishes that product from goods or services of other undertakings. In these situations the geographical name has obtained a new meaning and the word is not merely descriptive anymore, which justifies registra-tion as a trade mark.111 The fact that a colour might have several meanings does
107 Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 153. 108
C-104/01 Libertel, para. 67.
109 Joined cases C-108/97 and C-109/97 Windsurfing Chiemsee.
110 Joined cases C-108/97 and C-109/97 Windsurfing Chiemsee, paras. 9–15. 111 Joined cases C-108/97 and C-109/97 Windsurfing Chiemsee, para. 47.
fore not mean that a colour cannot become distinctive through use. It would be unrea-sonable to demand that the new meaning (the meaning as a trade mark) would com-pletely replace the original meaning. However, the colour should mainly convey the meaning of a trade mark. The colour has then acquired a “secondary meaning”, relevant to the assessment of acquired distinctiveness.112 The important question is therefore whether the average consumer instantly recognizes the sign as a badge of origin.113 For that reason, it can be rather difficult for a colour to acquire distinctiveness since con-sumers rarely perceives colours as separate from the product, but rather as a decoration of it.114
Another important statement made by the ECJ in the Windsurfing Chiemseecase was that no differentiation shall be made in the assessment of acquired distinctiveness „...by reference to the perceived importance of keeping the geographical name available for use by other undertakings‟.115
Applied to colours, this means that even though the need to keep colours available should be considered to some extent when assessing distinct-iveness per se, this consideration should not be made when assessing distinctdistinct-iveness through use. Another competition aspect is that the more competitors who use similar signs for similar products, the harder it is to acquire distinctiveness through use. More-over, the widespread use of colours in general in many businesses is a circumstance that probably makes it more difficult for colours to acquire distinctiveness.116
3.4.2.3 Numerical and geographical extent of recognition
In the assessment of whether a colour indicates the origin of a product and therefore is registrable as a trade mark, the question of how widespread the consumer recognition must be emerges. According to the ECJ in the Windsurfing Chiemseecase, it is the „...relevant class of persons, or at least a significant proportion thereof...‟ that should identify the origin of the product because of the trade mark.117 However, what consti-tutes a “significant proportion” has not been clarified by the court.118 The ECJ further established that it cannot be determined whether a trade mark has acquired distinctive-ness by reference to a predetermined percentage.119 The reason for this is that the evi-dence needed to prove that a trade mark has acquired distinctiveness through use varies in correlation to the degree of distinctiveness per se of the trade mark.120 A colour mark can be compared with a highly descriptive word mark, which probably requires
112 Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 225. 113 Bently and Sherman, Intellectual Property Law, p. 842.
114
Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 226. 115 Joined cases C-108/97 and C-109/97 Windsurfing Chiemsee, para. 48. 116 Lunell, Okonventionella varumärken: form, färg, doft, ljud, pp. 234–235. 117 Joined cases C-108/97 and C-109/97 Windsurfing Chiemsee, para. 52. 118
Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 214. 119 Joined cases C-108/97 and C-109/97 Windsurfing Chiemsee, para. 52. 120 Bently and Sherman, Intellectual Property Law, p. 842.
vincing evidence of acquired distinctiveness within a large part of the relevant class of persons.121
A special question arises in relation to CTMs, concerning the geographical extent of ac-quired distinctiveness. When it comes to word marks, these can be distinctive in some countries and descriptive in others due to different languages.122 In consequence, it is only necessary to prove that the trade mark has acquired distinctiveness in the substan-tial part of the Community where it is devoid of distinctive character per se.123 Colours on the other hand, are usually perceived in the same way throughout the Community, which makes them seem especially suited to be registered as CTMs. However, as a con-sequence, a lack of distinctive character is normally equally relevant in all Member States.124 Therefore it has been stated that, in order to register a colour as a CTM, dis-tinctiveness must have been acquired in the whole of the Community, or at least in a substantial part thereof.125
3.4.2.4 Effects of other marks
There is often more than one trade mark used on the same product. Especially non-traditional trade marks, including colour marks, are almost always used together with a main trade mark, most often a word mark. They are therefore sometimes called “secon-dary marks”. Nevertheless, this does not mean that the colour mark does not in fact function as a trade mark.126 The ECJ has established that a mark can acquire distinctive-ness even if it has only been used together with a registered trade mark.127 The case concerned a word mark, but the same principle has later been applied also in relation to colour marks.128 It must still be proven though, that the colour mark itself can distin-guish the product as originating from a certain undertaking.129 This can be quite difficult if all the evidence consists of pictures of the colour mark accompanied by another mark.130 However, acquired distinctiveness can be proven even in situations where the colour mark is always used in combination with another mark.131
121
Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 215. 122 Bently and Sherman, Intellectual Property Law, p. 843.
123 T-91/90 Ford v OHIM, paras. 24–28.
124 Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 218. 125
R 5/1999-3 (Cobalt blue), paras. 15–17.
126 Lunell, Okonventionella varumärken: form, färg, doft, ljud, pp. 229–230. 127 C-353/03 Nestlé, paras. 27–30.
128 R 1620/2006-2 (Purple), para. 25. 129
Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 232. 130 See for example R 799/2004-1 (IKEA‟s blue/yellow), para. 30. 131 Lunell, Okonventionella varumärken: form, färg, doft, ljud, p. 233.
