On 27 March 2019, the Court of Justice of the European Union (the "ECJ") clarified the conditions required for registering a colour trade mark under 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 (the "Trade Mark Directive") in case C-578/17, Oy Hartwall Ab v. Patentti- ja rekisterihallitus.
Oy Hartwall Ab, a Finnish company, had applied to the Patentti- ja rekisterihallitus (the Intellectual Property Office ("IPO") of 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 rejected the application for lack of distinctive character since the market study relied upon by Oy Hartwall Ab showed that the reputation through use of the sign actually concerned the figurative aspect and not its colour.
On appeal, the Markkinaoikeus (the Market Court of Finland) held that the graphic representation of the sign in respect of which protection was sought did not include a systematic arrangement associating the colours concerned in a predetermined and uniform way.
Oy Hartwall Ab further appealed to the Korkein hallinto-oikeus (the Supreme Administrative Court of Finland) which referred various questions to the ECJ for clarification. The central question was whether a sign represented as a colour drawing (as above) can be registered as a colour mark.
The first specific question was whether Articles 2 and 3(1)(b) of the Trade Mark Directive 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 (i) that sign can constitute a trade mark and, if so, (ii) whether it has a distinctive character within the meaning of Article 3(1)(b) of that Directive.
The ECJ held at the outset that the Trade Mark Directive does not establish categories of marks. Member States remain free to adopt rules governing the registration and invalidity procedures.
The ECJ then found that the fact that the registration of a sign is sought as a "colour mark" or "figurative mark" is relevant in order to determine the subject matter and scope of the protection conferred by trade mark law for the purpose of applying Article 2 of the Trade Mark Directive, in particular because it specifies whether the contours are part of the subject matter of the application for registration.
The ECJ added that while the criteria of assessment of the distinctive character of colour marks are the same as those applying to the other categories of marks, there may be "potential difficulties in establishing the distinctive character of certain categories of marks [colour marks] because of their nature". The ECJ reached that conclusion having regard to the perception of the relevant public which is "not necessarily the same in the case of a sign of colour per se as it is in the case of a word of figurative mark". The ECJ was of the opinion that the public is not normally inherently capable of distinguishing the goods of a particular firm solely based on a colour mark. This led the ECJ to refer to its Libertel case-law that "distinctiveness without any prior use is inconceivable save in exceptional circumstances and, even if a colour per se does not initially have distinctive character, it may require such character in relation to the goods or services in respect of which registration of the mark is sought".
Lastly, the ECJ warned that regard must be had to the "general interest" to ensure that the "availability of colours for the other traders who offer for sale goods or services of the same type" is not unduly restricted.
The second question was whether Article 2 of the Trade Mark 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 ECJ held that the subject matter and scope of the protection sought must be clearly and precisely determined. To this end, the verbal description of the sign serves to clarify the subject matter and scope of the protection sought under trade mark law.
However, in the case at hand, the Court found an inconsistency between the sign (depicted above) of which registration is sought which is a colour drawing with defined contours and the verbal description provided by Oy Hartwall in its registration application which referred to the sign as a colour combination without contours.
In the light of this discrepancy in the application, the ECJ held that the national competent authority was entitled to refuse registration.
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