ECJ: Stringent requirements for registering a color mark as an EU trademark

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A beverage manufacturer had a combination of colors registered as an EU trademark. In a ruling from July 29, 2019, the ECJ confirmed that the mark is null and void (Az.: C-124/18 P).

Registering a combination of colors requires overcoming significant hurdles. We at the commercial law firm MTR Rechtsanwälte note, for instance, that the arrangement of the colors and their relationship to one another need to be clearly defined, and the mark must be sufficiently distinct from products of other providers.

A beverage manufacturer failed to meet these requirements, having registered two combinations of colors as EU
trademarks. A rival firm successfully filed challenges to these with the European
Union Intellectual Property Office (EUIPO), claiming that the information
provided about the combination of colors was much too vague. The ratio of the
colors of the first mark was described as roughly 50:50, while the colors of
the second mark were described as being depicted next to each other in equal

This description was first rejected by the General Court of the European Union for being too
imprecise. In November 2017, it held that the color mark lacked sufficient
distinctive character. This decision has since been upheld by the ECJ in spite
of the beverage manufacturer’s argument that the combination of colors had
achieved significant brand awareness and possessed distinctive character.

The ECJ clarified that the graphic representation of two or more colors must be systematically
arranged in such a way that the colors concerned are associated in a
predetermined and uniform way. The
mere juxtaposition of two or more
colors, without shape or contours, or a reference to two or more colors ‘in
every conceivable form’, will not exhibit the required qualities of precision
and uniformity.

According to the case-law of the ECJ, combinations of colors cannot be granted an EU trademark
if they allow for a plurality of reproductions. If this is the case, the
requirement for a trademark to be clear is not met.

Trademarks are an important asset for businesses. Yet registering a trademark may require
overcoming significant hurdles. Lawyers with experience in the field of IP law
can advise on trademark law.

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