We are back! The revival of colour combination marks.

It has taken the European judiciary over 25 years to finally clarify how trade marks protecting a combination of colours shall be filed to be sufficiently precise. The major clarifications only came in 2019 and 2021 with a total of three decisions. So let's look at those decisions, the history and the way ahead.

First steps

With its judgments in Libertel and Heidelberger Bauchemie the Court of Justice recognised the possibility of registering abstract colour marks. For the combination of colours the Court in Heidelberger Bauchemie did not only establish the owner may use an internationally recognised colour code to identify the colour well as set forth in Libertel, but also required that such mark is to be “systematically arranged by associating the colours concerned in a predetermined and uniform way”. The mark applied for in Heidelberger Bauchemie, however, claimed in the description protection for the colours blue/yellow in any conceivable form. The Court held that such claim was too imprecise as it did neither show the exact arrangement of the colours nor did it indicate the exact ratio of  each other. But what was actually meant by “systematically arranged in a predetermined and uniform way”? In particular what about cases where (i) the ratio of colours to each other is being defined but the arrangement is not and (ii) the arrangement is defined but the ratio of the colours to each other is not. And what about a mark which shows contours?

The latest judgments

The row of decisions started off with the CJEU judgment in Hartwall where the Court of Justice clarified that a mark which shows contours in the graphic representation as the following one is not an abstract colour mark but needs to be classified as a figurative mark.

The second judgment in Red Bull answered the question whether it is enough that the ratio of colours to each other is being defined by means of a description but not its exact arrangement. The Court denied a precision of the following blue/silver mark despite having the following description: “The two colours will be applied in equal proportion and juxtaposed to each other”, hence in a ratio 50/50.

The Court also considered that the imprecise nature of the mark was reconfirmed by the fact that the mark was used in the following manner (without wrongfully considering that this is a 50/50 arrangement):

The third and final judgment in this row is the mentioned Andreas Stihl ruling which found that as long as the arrangement of the colours is defined by means of a description the colour combination mark is sufficiently precise, even though the ratio of the colours to each other is not defined. In the present case the description was: “The colour orange is applied to the top of the housing of the chain saw and the colour grey is applied to the bottom of the housing of the chain saw.”

The Court – indirectly – considered the following uses to be “expressions” of the mark:

Source: left-hand image, right-hand image

Open questions

The only remaining questions are now,

• whether trademarks as the following one are in fact colour marks or not better to be qualified as position marks.

• whether colour marks filed without any description at all and just showing the two colours juxtaposed to each other are sufficiently precise.

While the answer to the first question is likely to be a position mark in light of the comments of Advocate General Szpunar in his opinions in the Louboutin case, as well as the CJEU's comments in its judgment, the answer to the second question remains open. However, the comments of the General Court in Andreas Stihl indicate that a colour mark without description may indeed not be precise enough, because the nature of colour marks is that they have no contours and the mere graphic representation is no substitute for a systematic arrangement. The Court emphasized that the systematic arrangement must be associating the colours concerned in a predetermined and uniform way. The Court even went so far to say that the graphic representation and the description enable the consumer to view a particular object. It remains to be seen whether the EUIPO will now change its policy and move away from the principle “What you see is what you get”.

Next steps

Owners of colour marks should consider whether in light of the above-mentioned judgments new applications of their colour combination marks should be filed as their current colour combination marks may not comply with one or various requirements set out above.

Authored by Andreas Renck and Christine Stoeber