The request of appeal filed by Red Bull against the decision --- of the General Court of European Union which adjudicated the trademarks of Red Bull as invalid in accordance with the decision of EUIPO --- has been rejected according to the Court of Justice of the European Union (CJEU) decision dated 29th of July 2019.
Chronology of the Conflict:
Red Bull has made two trademark registrations before EUIPO, one is dated 2005 and the other 2011. Both trademark applications are filed for the color trademark shown below such that they include the energy drinks in Class 32.
- The first trademark is described as follows: "Protection for Blue (RAL 5002) and Silver (RAL 9006) colors arebrequested. The ratio of colors is approximately 50% to 50%."
- The second trademark is described as follows: "Blue (Pantone 2747C), Silver (Pantone 877C) colors will be applied at an equal rate and will be side by side."
The Polish company Optimum Mark filed an application to EUIPO on 20th of September 2013 by claiming that the both trademarks were invalid.
Regarding the first trademark; Optimum Mark claimed that the conditions specified in EUTMR (EU Trademark Regulation) Article 7/1-a were not fulfilled by alleging that the colors were not pre-specified and arranged in uniform manner.
According to Article 7/1-a, " signs which do not conform to the requirements of Article 4 shall not be registered as trademarks". And according to Article 4, "A trademark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colors, the shape of goods or of the packaging of goods, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings"
According to the Optimum Mark, the definition of 'approximately 50% to 50%' leads to a plurality of combinations, which will cause the consumers not to make their purchases confidently.
As for the second trademark, Optimum Mark alleged that this trademark also does not conform to the requirements described in Article 7/1-a, and that the term "side by side" may have several meanings, and that the definition stated does not clearly and precisely explain how colors are applied to products.
EUIPO Cancellation Division has adjudicated that the trademarks are cancelled on the grounds that there is no certainty as to how said two trademarks will be applied on the products. The decisions taken were appealed before the EUIPO Board and then before the General Court of the European Union, however the requests of appeal were rejected. Thereupon, Red Bull applied to CJEU for the nullity of judgment regarding the cancellation of its trademarks.
DECISION OF CJEU:
According to the CJEU, the registration of a trademark application is only allowed providing that the scope of the protection requested is clear and precise and that the graphic presentation is made in accordance with the requirements of Article 4 of the EUTMR. If an application is accompanied by an oral description of the trademark, this definition should serve to clarify the subject and scope of the protection requested; such a description shall not be inconsistent with the graphic presentation of trademark or shall not cause suspicion on the subject and scope of this graphic representation (Hartwall, C C 578/17).
In the decision of Heidelberger Bauchemie (C 49/02) CJEU has stated that the graphic representation of two or more colors, designated in the abstract and without contours, must be systematically arranged by associating the colors concerned in a predetermined and uniform way. Therewith, it also stated that the description regarding juxtaposition of two or more colors, without shape or contours, "in every conceivable form", does not exhibit the qualities of precision and uniformity required by Article 4.
According to CJEU, such representations would not allow the consumer to perceive and remember a particular combination, which will cause consumers to make a purchase without knowing exactly what they purchase. Similarly, the competent authorities and economic operators would not know the scope of protection provided to the owner of said trademark.
In the light of all these considerations, the CJEU has come to a conclusion that the General Court was not wrong in its assessment regarding Articles 4 and 7(1)(a) of the EUTMR, and that non-predetermined or non-uniform signs allowing multiple combinations would not conform to the requirements of the EUTMR. Thus, despite the fact that it is not explicitly described in Article 4 of EUTMR, to be able to register a sign, it must be demonstrable such that subject of protection provided to the owner can be clearly and precisely understood.
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