In the cassational appeal no.1512/2008, the Supreme Court (Contentious-administrative Chamber) took the chance of reminding how hard is to have a mark granted for a colour "as such".
The appellant, holder of the International mark application 803.195 in classes 6, 7, 8, 9 and 20, aimed the registration in Spain of a mark consisting of the red colour tipified as "pantone c32". Both the Spanish Trade marks and Patents Office and the High Court of Justice of Madrid (first judicial instance in the case) ruled that that specific colour "as such" did not have distinctive nature, and that appellant's use of the said colour as its "corporate colour" was not enough for the specific red colour to have acquired distinctiveness.
On the basis of Spanish precedents (Supreme Court ruling of March 27, 2006, cassational appeal 819/2003) and in the Court of Justice's cases "Libertel" (case C-104/01) and "KWS Saat AG" (case C-447/02), the Supreme Court has confirmed that colours as such do not "normally" have distinctive nature but in those exceptional cases where, due to an extensive and continuous use prior to the application, such colour has acquired secondary meaning. "Specially when the relevant market is very specific", has added the Supreme Court.
After having reviewed the evidence in the file, the Court stated that the red colour claimed in the application was "usual" in the market, so for public interest reasons it should remain available for all economic operators.
According to the Court, appellant did provide evidence of a prior use in Spain, but such a use was not enough to establish secondary meaning because in all cases the colour was associated with the appellant's own trade name.
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