MARQUES has applied to intervene in a case before the EU General Court concerning the registration of a colour combination as an EU trade mark.

MARQUES is supporting OMV Aktiengesellschaft, which filed an international registration designating the EU for the combination of gentian blue (RAL 5010) and yellow green (RAL 6018) in the arrangement shown in June 2021 (filing number 1593116).

In March 2023, the application was found to be non-distinctive under Article 7(1)(b) of the EUTM Regulation in relation to: goods relating to fuels, hydrogen, oils and vehicle equipment (in classes 1 and 4); retail/wholesale services relating to these goods and relating to hot water, medicinal and mineral water (in class 35); and building, construction and demolition services relating to facilities providing those goods/services (in class 37). It was allowed in relation to some other services.

Upholding the examiner’s decision, in November 2023 the Fifth Board of Appeal held that the colour combination represents the generic characteristic of eco-friendliness, which is common in the field of automobiles and fuels (Case R 798/2023-5).

OMV appealed that decision to the EU General Court on 22 January 2024 (Case T-38/24).

Questions of principle

In its amicus curiae brief, MARQUES argues that the case raises three key questions of principle that affect its members:

(1) What is the test when assessing the inherent distinctiveness of a colour combination trade mark?

(2) What is the required level of fact finding of the EUIPO when assessing the perception of a colour combination by the relevant public for the purpose of Article 7(1)(b) EUTMR?

(3) What use- and market-related circumstances are relevant under Article 7)(1)(b) EUTMR (and not under Article 7(3) EUTMR)?

The MARQUES brief states: “The application of the law as exemplified in the Contested Decision further curtails the already narrow possibility to successfully register a colour combination EUTM. This, in turn, has a detrimental effect on the scope of protection of this category of signs which are commonly used for brand communication and effectively perform the function of a trademark without restricting competition.”

In particular, it argues that the Board’s decision did not take into account the fact that the trade mark application consists of two very specific colours, in combination, which are specifically and systematically arranged. The Board therefore failed to recognise that colour combination marks have a much higher level of inherent distinctiveness than single colour trade marks.

Overly restrictive approach

MARQUES is concerned that the decision will cement an overly restrictive approach to colour combination marks – which goes against the literal meaning of the law, actual market practice and actual consumer perception. This could further curtail the already narrow possibility to register a colour combination EUTM.

“This, in turn, may have a detrimental effect on the protection of signs which are, in practice, commonly used for brand communication and effectively perform the function of a trademark without restricting competition,” states the brief.

MARQUES is represented by Ana Padial, Jakub Słupski and Sebastian Fischoeder, all members of the Amicus Curiae Team, which is chaired by Roderick Chalmers.

The decision to intervene in the proceedings was approved by the MARQUES Executive Team last month and the application for leave to intervene was filed on 15 April.