
Trump Administration Executive Order (EO) Tracker
While enjoying protection for abstract colour is a valuable asset in trade (see our earlier publication under Related Materials), there are various challenges when obtaining or maintaining such trademark protection. Depending on the concrete colour mark, the European Intellectual Property Office (EUIPO) takes a rather strict approach both for successfully registering as well as defending colour marks in invalidity actions based on absolute grounds.
The EUIPO’s practice is very strict in cases where applicants wish to protect one abstract colour, such as the fictional mark below:
At the date of this publication, there are only 24 EU trademarks on the register protecting a single colour that were registered based on their inherent distinctiveness. This limited number of successful registrations, particularly in the last few years, is testament to the high threshold for proving a single colour mark’s inherent distinctiveness. The requirements for inherent distinctiveness were laid down in the Libertel judgment (C-104/01), namely that
Where the colour mark protects highly specialised goods or services, owners of abstract colour marks are well advised to outline the market particularities to the EUIPO, as it cannot (understandably) be assumed that EUIPO examiners are familiar with these or can find sufficient and reliable information online.
In contrast, the threshold for obtaining protection for a colour combination comprising two or more colours is lower. Two fictitious examples of colour combinations are included below:
The EUIPO has accepted more than 250 colour marks protecting two or more colours. However, in these cases possible issues may concern the trademark’s graphic representation or whether the description of the mark is sufficiently clear for the purposes of Article 7(1)(a) EUTMR (see CJEU in C-124/18 P).
When applying for trademark protection for abstract colour, close attention should be paid to Article 2(2) of the EU Trade Mark Implementing Regulation (EUTMIR), which states that the application may include a claim that the sign has acquired distinctive character through use, as well as an indication of whether this claim is meant as a principal or subsidiary one.
If the applicant makes a principal claim, the EUIPO will take only one decision both on the trademark’s inherent distinctiveness and, if the trademark lacks inherent distinctiveness, on the acquired distinctiveness through use. The second option is to make the claim as a subsidiary one. In this case the Office will take two separate decisions. The EUIPO will first decide on the trademark’s inherent distinctiveness. This decision can be appealed separately. Once the EUIPO’s decision finding lack of inherent distinctiveness has become final, it will issue a second decision on the claim of acquired distinctiveness through use. The route of a subsidiary claim is recommendable where the Libertel-criteria are fulfilled, namely that the trademark seeks protection for a limited number of goods, and the market is very specific.
The owner of an abstract colour mark may also take advantage of the subsidiary claim in invalidity actions based on absolute grounds against its colour mark. Here, the trademark owner may ask the Office to take a decision on the mark’s inherent distinctiveness first, and only if this is denied, on the acquired distinctiveness claim (see EUIPO Guidelines, Part D, Section 2, point 3.2).
If the applicant needs to show that its abstract colour mark has acquired distinctiveness, i.e. that the relevant public perceives the colour as in indication of commercial origin in the entire EU, surveys will be the key instrument to do so. The importance of surveys as one of the most direct kinds of evidence showing the actual perception of the relevant public is also recognized by the EUIPO (EUIPO Guidelines, Part B, Section 4, Chapter 14, point 8.2).
Conducting surveys is a highly cost-intensive undertaking, which is why prior to conducting surveys, trademark owners should work closely with a market survey company to ensure that the surveys have probative value and thus will be accepted by the EUIPO or the European Courts. The following non-exhaustive factors should be considered:
Authored by Christine Stoeber