The EU General Court last week published its judgment in the joined cases T-101/15 and T-102/15, Red Bull v EUIPO. The case involves two EU trade mark applications for a blue/silver colour combination for “energy drinks” in class 32.

MARQUES was granted leave to intervene in support of Red Bull and was represented before the Court by Roland Mallinson, partner of Taylor Wessing and member of the MARQUES Council and Executive Team.

Mere juxtaposition of two colours

The two marks were filed in 2002 and 2010 and registered on the basis of acquired distinctiveness. However, they were challenged by Polish company Optimum Mark, and the cancellation division found that the graphic representation of the marks constituted the “mere juxtaposition of two or more colours, designated in the abstract and without contours”, and therefore did not exhibit the qualities of precision and uniformity required by Article 4 of Regulation No 207/2009. This finding was upheld by the Board of Appeal.

The General Court has now confirmed that decision, saying that the Board of Appeal was right to find that the graphic representation of the marks “allowed several different combinations of the two colours” and that the accompanying descriptions “did not provide additional precision with regard to the systematic arrangement associating the colours in a predetermined and uniform way”.

It added that “it is neither impossible nor disproportionate to require that an application for registration relating to a trade mark consisting of a combination of colours per se be represented graphically or accompanied by a description containing the systematic spatial arrangement of the colours in such a way as to enable the subject matter of the protection afforded by that mark to be grasped clearly and precisely”.

MARQUES reaction

In its intervention, MARQUES said the Board of Appeal decision “has the effect of unfairly discriminating against owners of trade marks that are a combination of two or more colours per se in the abstract … It seeks to impose a requirement that such marks, and only such types of marks, must include an ‘explicit description’ of how the colours are applied to the product or in marketing materials … MARQUES considers this extra requirement is not needed for a mark to meet the registration requirements set out in Article 4 CTMR or Article 2 of the Trade Marks Directive”

Following the judgment, Roland Mallinson said: “MARQUES is disappointed by the decision. We had supported Red Bull's case as we believed the original decisions wrongly set the bar too high for registering these types of marks once proven to be distinctive from extensive use. Today's decision likewise makes it effectively impossible to protect the combination of two particular colours when, in practice, everyone knows how strong such marks can be at identifying trade source. I tried to reinforce that point in court by wearing the famous (to cricketers) red and yellow colours of the MCC. Illogically, it remains easier to secure a broad monopoly right for a single colour than it is for colour combinations. MARQUES is keen to see an interpretation of the law to allow such registrations, both in this case and under the new rules. The latter do away with the obligation to represent marks graphically and acknowledge the ‘what you see is what you get’ principle.”

Although the Court did not agree with MARQUES’ submissions in this case, the judgment does make several references to the arguments put forward by MARQUES (“the intervening association”).

MARQUES will continue to support Red Bull in the event of an appeal to the CJEU.

The MARQUES Amicus Curiae Team considers intervening in writing and/or at a hearing in any case that is likely to have a significant impact on brand owners. To find out more about its work, see previous submissions and contact the Team members, visit its dedicated page. The Chair of the Team is Michael Treis of Baker McKenzie and Vice Chair is Martin Viefhues of Jonas Rechtsanwaltsgesellschaft.