In the recent case of Oy Hartwall Ab (C-578/17), the CJEU has underlined the issues applicants continually run into when seeking to register trade marks in colours per se.
Oy Hartwall Ab (a Finnish company) applied to the Patentti- ja rekisterihallitus (Intellectual Property Office, Finland) to register a trade mark for a sign described as: 'The colours of the sign are blue (PMS 2748, PMS CYAN) and grey (PMS 877)' in class 32: "Mineral waters", and depicted by the following representation:
The Finnish IPO sought clarification on the application and Oy Hartwall confirmed that they were applying for a colour mark not a figurative device mark. In 2013, the application was rejected for being devoid of distinctive character as the survey evidence provided by Oy Hartwall showed the reputation through use attached to the figurative sign, not the colours.
On appeal to markkinaoikeus (Market Court, Finland) it was held that the mark did not include a systematic arrangement of the colours in a predetermined and uniform way. Therefore, the mark did not satisfy the requirements of graphic representation. Oy Hartwall appealed to Korkein hallinto-oikeus (Supreme Administrative Court, Finland) who referred various questions to the CJEU for clarification. The questions concerned whether a sign represented as a colour drawing (as above) can be registered as a colour mark.
The first question
The first question concerned whether Articles 2 and 3(1)(b) of Trade Marks Directive 2008/95 meant that the classification as a 'colour mark' or 'figurative mark' given to a sign by the applicant on registration is a relevant factor in determining whether (1) that sign can constitute a trade mark and, if so, (2) whether it has distinctive character within the meaning of Article 3(1)(b) of that Directive.
The court reasoned that the classification specifies whether the contours are part of the subject matter of the application. The competent authority must carry out an examination by reference to the actual situation and use made of the sign – not in the abstract. However, the perception of the relevant public is not necessarily the same for a sign consisting of a colour per se, as a word or figurative mark. Equally, regard must be had to the public interest in not unduly restricting the availability of colours.
It held that the classification of a sign as a 'colour mark' or 'figurative mark' is a relevant factor for the purposes of establishing whether the sign can constitute a trade mark under Article 2 and whether it is distinctive under Article 3(1)(b). However, the competent authority should carry out a global assessment of distinctive character by reference to the actual situation of the mark considered.
The second question
The second question concerned whether Article 2 of the Directive must be interpreted as precluding the registration of a mark in the application for registration in the form of a drawing of a colour mark.
The court held that the sign (as depicted above) is represented by a colour drawing with defined contours whereas the classification of the mark is a colour combination without contours. The verbal description serves to clarify the subject matter and scope of protection sought. However, the competent authority must refuse registration of a trade mark where there is inconsistency in the application for registration.
This case is another example of the issues which colour per se trade marks routinely encounter at the application stage. The graphical representation of the sign was a figurative drawing with contours, but described as being an application for two colours without contours. Whilst this inconsistency may prove fatal for Oy Hartwall's trade mark, the CJEU's judgment is interesting for two other reasons:
- Firstly, it re-emphasises the CJEU's view that the public view colour trade marks differently to word or figurative marks.
- Secondly, the evidence submitted by Oy Hartwall to demonstrate acquired distinctiveness highlights the difficulty in showing consumers rely on the colour per se to distinguish economic origin, rather than the figurative mark which utilises those colours.
For further thoughts on this subject, please see "Colour trade marks: certainty, utility or impossibility" in JIPLP (2017) 12(10) and keep an eye out in JIPLP for the forthcoming "Colour trade marks revisited: use and infringement".