The German Federal Patent Court (Bundespatentgericht) recently refused the registration of the sign

for the goods "Energy drinks" in Class 32.

The application was filed with the description

"The trade mark consists of a combination of the colours "blue" (Pantone 2747C) and "silver" (Pantone 877C) in a ratio of about 50 to 50"

The German Patent and Trademark Office rejected the sign as lacking graphical representability according to § 8 (1) Markengesetz (German Trade Mark Act). The description "a ratio of about 50 to 50" was deemed not sufficiently specific. Additionally the sign allegedly lacked distinctiveness in the sense of § 8 (2) No. 1 Markengesetz, since the colours blue and silver are commonly used in the field of energy drinks.

The applicant filed an appeal and argued that

- it is of course possible to represent the sign in a graphical way,
- the description of the ratio between the colours only serves as an explanation, is neither necessary nor part of the application and may thus in any case be amended during the proceedings and
- the sign is disctinctive or at least has acquired distinctiveness due to the continuing and exhaustive use.

Further the applicant auxiliary requested to amend the description to

"The trade mark consists of a combination of the colours "blue" (Pantone 2747C) and "silver" (Pantone 877C) in a ratio of 47,65 % (blue) to 52,35 % (silver)" 

According to the court, however, the description is deemed necessary in order to clearly define the claimed specific colour combination. In view of the settled case law the graphical representability of a colour combination without a specific contour being claimed requires

(a) a clear and permanent designation of the colours claimed,
(b) a specific definition of the quantitative ratio between the colours and
(c) a specific definition of the spatial arrangement of the colours claimed.

The present application lacks point (b) since the wording "a ratio of about 50 to 50" is not sufficiently specific as it covers a large number of colour ratios like 46:54, 51:49 ...

Further the court was of the opinion that it is not possible to overcome a lack of the required graphical representability in the sense of § 8 (1),(3) Markengesetz by an acquired distinctiveness.

Finally it was deemed not to be possible to amend the description of a trade mark after filing, as the description also defines the extent of protection of the sign.  

Thus the appeal was rejected by the court.

So if you think about claiming a combination of colours as a trademark, you should take special care of a correct and specific description (at least in Germany).

Case reference: Bundespatentgericht 26 W (pat) 12/10 of April 08, 2011. The decision can be retrieved from the court’s website by following the above link.