In this article, we discuss colour trade marks where we take a look at the Biscoffi case, the recent EU colour trade mark decision in the matter of Lotus Bakeries v European Intellectual Property Office (EUIPO, T-1096/23).
The EU trade mark application
On 22 February 2022, Lotus Bakeries filed an EU application to register the somewhat underwhelming trade mark that appears below. This application was filed in class 30 for a range of delicious goods including biscuits, cakes, confectionery, waffles and speculoos. If the final item has you stumped, speak to your favourite Hollander or Belgian!
*Image credit unknown
The trade mark examiner
...was underwhelmed, unimpressed, and uninspired. The red and ever-so-slightly white block is not distinctive, said he or she, or as the ponderous language of EU trade mark law stated, the trade mark was 'devoid of distinctive character'. This objection was as per Article 7(1)(b) of the EU Regulation.
The Board of Appeal (BOA)
An appeal was probably inevitable. But so was the dismissal of the appeal. These were some of the BOA's reasons:
- The trade mark consists of the colours red and white in a particular format – the BOA dismissed the two-coloured device as a mere 'marketing tool'.
- The red-and-white combination lacks 'any eye-catching features that would enable the relevant public to immediately perceive that sign as an indicator of the commercial origin of the goods at issue'.
- The trade mark is 'devoid of distinctive character'.
The General Court
The case went up to the General Court, which dismissed the action and ordered Lotus Bakeries to pay the costs. What I'm going to do now is discuss some of the issues that were raised by the court, and which have general application:
- Registrability of trade marks - the basics
Trade marks which are 'devoid of distinctive character' cannot be registered. You probably knew that!
- A distinctive character is a must
In order to possess a distinctive character, a trade mark must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking.
- A colour or colours can be trade marks in certain circumstances
On the issue of 'whether colours or combinations of colours are capable of distinguishing the goods or services of one undertaking from this or other undertakings, it must be determined whether or not those colours or combinations of colours are capable of conveying specific information, particularly as regards the origin of the product of service'.
- More words on colours as trade marks
'In order for colours or combinations of colours... to be able to constitute a trade mark, they must be able to satisfy the other conditions laid down... in particular they must be presented as a sign with distinctive character, that is to say, capable of distinguishing the product or service covered by that sign as originating from a particular undertaking, and thus capable of distinguishing that product or service from those of other undertakings.'
Surely there must be easier ways of saying these things!
- Consider the general interest and the limited number of colours
When it comes to 'assessing the potential of a given colour or combination of colours as a trade mark, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought'.
- Colour trade marks may well be perceived differently
'Although the law ...does not differentiate according to types of signs, the fact remains that the relevant public's perception is not necessarily the same in the case of a sign consisting of a colour or colour combination.'
- Yet the same rules apply
In order for a 'colour combination such as the one at issue to be able to fulfil the function of identifying the commercial origin of the goods at issue, it must contain elements capable of distinguishing it from other colour combinations and of attracting the consumer's attention'.
In our view, this judgment is likely to be significant. We hope you find this note useful!
*Reviewed by Ilse du Plessis, Executive in ENS' Intellectual Property Practice.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
