Red Bull has the blues

Red Bull GmbH has seen a number of its European Union colour mark registrations being challenged by Optimum Mark Sp. z o.o over the years. In the recent decision related to the two registrations shown below, Red Bull's appeal to the Court of Justice of the European Union (CJEU)* was dismissed, resulting in the loss of its registered rights from about 2002, to two of its European Union Blue/Silver colour marks for its energy drinks.

Red Bull has prudently filed new applications to register the colour combinations in the European Union, and indeed obtained new registrations for some of the other colour combinations that were previously cancelled. But this recent case is a good reminder about the peculiar issues with protecting marks that consist only of colour(s).

Optimum Mark contended that each of the descriptions accompanying the images of the trade marks indicated that there could be any number of ways that the blue and silver colours could be arranged relative to each other, for each of the trade marks. Reading the description of the arrangement of colours along with registered image of the trade mark did not allow the subject matter and scope of the protection granted by the registration to be identified clearly and precisely. This was contrary to one of the fundamental requirements for registration of a trade mark.

The images and the descriptions therefore were not self-contained, clear or precise and did not allow the colours to be associated in a predetermined and uniform manner. The public interest of the consumer, competitors and public authorities was compromised since it would not be possible to perceive and recall only one particular combination. The colours being in a ratio of 'approximately' 50%-50% reinforced uncertainty in the arrangement and introduced more than one variation of combining the blue and silver colours. Similarly the 'juxtaposition of colours applied in equal proportion' meant that the arrangement of colours could take different forms and have more than one layout.

Both the trade marks were registered on the basis of evidence that they had acquired distinctiveness because of their use prior to the filing of the applications. But it did not help Red Bull's case that this evidence consisted of reproductions of the combination of the blue and silver colours which were very different from the vertical juxtaposition of the registered marks. One can have some sympathy for Red Bull's situation where on the one hand the evidence of use was accepted for acquired distinctiveness and the trade marks registered on that basis; but this very evidence was its undoing when it confirmed the plurality of combinations reinforcing the weakness of the registered marks.

Red Bull's argument of being able to rely on its legitimate expectation that once the marks had been registered the intrinsic registrability of the marks could not be challenged was also dismissed. There was no unconditional assurance given by the European Union Intellectual Property Office that the graphic representations were precise and the registrations could not be challenged. In fact the trade mark legislation provides that registration of a mark can be declared invalid if it was registered in breach of one of the absolute grounds for refusal.

 While trade mark registration provides a strong basis to prevent competitors from encroaching on the registered rights, the registration itself must be able to withstand challenge by others. In the context of colour marks, it is settled law that the registration of a sign consisting of a combination of colours must not unduly restrict the availability of colours for the other traders who offer the same types of goods and services as those in respect of which registration is granted. It is useful to remember the type of challenges that competitors might bring, so as to be able to navigate these and ensure robust protection.

*Case C-124/18P