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Spain: The Strange Case of the Colour Red Trademark.
It is relatively common that a trade mark attorney is confronted with the enquiry whether the colour per se and colour combination trademarks are registrable under the law of his jurisdiction.
As far as Spain is concerned, that is theoretically possible under the interpretation of the CJEU “Libertel” (C-104/01), "Heidelberger Bauchemie” (C-49/02) and "KWS Saat AG" (C-447/02), cited by the Spanish Supreme Court in a number of occasions and commented the last two by the IPKat here and here. In particular, the Supreme Court has stressed on the condition that, by registering the colour per se, the applicant is not obtaining a unduly competitive advantage. The daring applicant shall identify the colour with an accepted colour code system (such as Pantone).
There is not a search tool in the Spanish Patent and Trademark Office (“Spanish PTO”) that would allow the user to easily search by type of mark (3D, colour, sound, etc.) such as the CTM Online. One can only trust on the personal experience and on the literature on the matter. The Spanish PTO officers can also be a good source of information and, repeatedly asked by whom signs this entry, a couple have confirmed that –to their knowledge- in no instance the Spanish PTO had accepted a colour per se trade mark application due to, among other reasons, lack of acquired distinctiveness. As a matter of fact, the Spanish Supreme Court has clearly established that a colour per se is registrable if the applicant proves that the relevant consumer associates the colour in question with the source of origin. An instance which, in opinion of the Court, can only occur through previous use because the colour as such is not originally distinctive save extraordinary circumstances (Cases of Prozac of 27 March 2006 RJ 2006/1941 and Hilti Akiengesellschaft of 22 October 2009 RJ 2010/350). Such use was not good for Hilti's attempt to register the color red for goods in classes 6, 7, 8, 9 y 20, as it only proved the use of such a color along the word mark Hilti (M803195). Telefónica S.A. submitted evidence of intensive use during 10 months with the trademark application for the combination of a whole range of shades of blue (M2900865), but to no avail. According to the Spanish PTO, the registration of the whole range of shades would entail even if the applicant restricted the list to goods in class 38, an unduly competitive advantage.
For all these reasons, it was a great surprise to find the trademark registration M3062401, which appears in the database as a red coloured box:
The mark has no words, the option "Gráfico" (figurative) is chosen, and is merely described as "red". It covers goods in classes 18 and 25. From the information provided in the online database, the trademark registration passed on 2 August 2013 the examination process after an office action. It could be assumed that the owner successfully proved acquired distinctiveness through use. The owner, a competitor of Inditex called Sociedad Textil Lonia, S.A., runs a clothing and fashion robust business that include the brands Purificación García and Carolina Herrera. Certainly, the expectations to find an interesting case were high.
Once this blogger paid the official fee (3.52 Euros) and accessed to the file, all hopes to learn how a colour trademark had passed the filter of the Spanish PTO vanished. The officer, as candid as this blogger was, said the mark was not registrable as it would fall under article 5.1.b) Spanish Trade Mark Act due to lack of distinctive character. In answering the office action, the owner argued that the "red box" mark had been largely used for its goods and was known to the average consumer. It filed a pile of documentation with evidentiary purposes. Then the examiner understood that the mark in question was not a colour per se mark, but consisted in a red coloured box. Simply as that.
One can only conclude that things concerning colour per se trademark registration in Spain stand as they are, unless any reader reveals any hidden secret in the Spanish PTO archives.
Posted by: Fidel Porcuna @ 12.30
Tags: Colour Spain ,
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