Brand owners may apply to protect combinations of colour either as colour marks or as figurative marks. The distinction is an important one, not only for determining the scope of any eventual rights, but also in determining whether protection is likely to be achieved in the first place or, if granted, is likely to stand. Enercon GmbH’s recent experience highlights the issues that may arise.
In 2001, Enercon GmbH applied for a Community trade mark (no. 2346542) for a ‘colour mark’ (this is how the mark was identified on the application form). The mark had the appearance of a 2D representation of a tube or pin in shades of green colour ranging from dark to light. Registration was sought in respect of “Wind energy converters, and parts therefor” in Class 7. The application proceeded to registration in 2003.
Six years later, in 2009, GamesaEolica SL applied for a declaration of invalidity of the registration before the Cancellation Division of OHIM and this was upheld on the basis of Article 7(1)(b) because it was considered that the mark defined the way in which the colours may cover a wind turbine tower.
Enercon filed a notice of appeal against the Cancellation Division’s decision. The Board of Appeal annulled the decision of the Cancellation Division. It held that the contested mark consisted of a figurative sign comprising a two-dimensional shape made up of colours, and not ‘a colour mark’ and that it was sufficiently distinctive and not descriptive.
Gamesa subsequently appealed to the General Court to have the decision of the Board of Appeal annulled. OHIM contended that the Court should dismiss Gamesa’s action.
Gamesa relied on the following 3 pleas in their appeal:
i) the Board of Appeal was wrong to re-categorise the mark as a figurative mark and therefore its assessment of the distinctive character of the contested mark was incorrect;
ii) the Board of Appeal was not entitled to re-categorise the nature of the mark; and
iii) the Board of Appeal should have found that Enercon acted in bad faith when filing its trade mark application.
The Court dealt with the 2nd plea first. It held that the Board of Appeal is required to carry out a new, full examination of the merits of the case before it, in terms of both law and fact – it had jurisdiction to re-examine the issue of the nature and definition of the mark applied for and, where appropriate, to reach a different conclusion to the Cancellation Division. The Court held that the plea wrongly called into question the Board of Appeal’s jurisdiction in that regard and it declared the plea unfounded and rejected it.
The Court then turned to the 1st plea. This was important because, if the mark were held to be a colourper se mark, it would not have been registrable without evidence of acquired distinctiveness, unless there were exceptional circumstances, whereas if it were deemed to be a figurative mark, it might be accepted as inherently distinctive.
Enercon did not specify its mark as a figurative mark in its application for registration and the mark was registered as a colour mark. Although there was no requirement to provide details of the way in which the combination of colours would be applied to the wind turbine towers, if Enercon had made it clear at the time of filing that it was seeking registration for a mark comprising colours in a particular shape or form, the registration may not have been declared invalid.
The Court held that the Board of Appeal made an error of assessment by finding the contested mark was not a colour mark but rather a two dimensional figurative mark made up of colours, therefore the Board of Appeal’s decision was based on a mistaken perception of the nature and characteristics of the mark at issue. Consequently, the 1st plea of law was upheld and the contested decision was annulled in its entirety without the Court having to consider the 3rd plea. As a result, the Court cancelled Enercon’s CTM.
This decision highlights the requirement for colourper se marks to have acquired distinctiveness to be registered or to remain registered in the face of an invalidity attack. An applicant for a colour mark must be able to evidence this, save perhaps in exceptional circumstances where the specification is very restricted and the relevant market is very specific. Perhaps if Enercon had narrowed its specification, it might have had an argument for validity, but, given the already specific nature of the goods (wind energy converters), it would have been difficult to be more precise.
When making an application for registration of a colour mark, an applicant should consider whether the mark could be portrayed on the application form as a figurative mark (and identified as such) by limiting the scope of protection to a particular application of the colour(s) to the goods or by defining shape or form. If the mark is specified in this way, there is a greater chance the mark will be deemed inherently distinctive. OHIM have moved away from a tick box categorisation of the trade mark on the application form to a field named “Trade Mark type” and so the onus is on the applicant to state what type of mark they are applying to register.
Owners of colour marks on the CTM register that were registered without defining the mark in this way or without evidence of acquired distinctiveness before OHIM’s adoption of a stricter approach to examination, need to be aware that the validity of their registrations could be challenged at any time. It may be wise to file further applications for ‘figurative marks’ comprising the colours represented in a particular form as a back-up.
For advice on whether back-up protection for existing colour marks should be sought, please contact the Jenkins Trademarks Group at firstname.lastname@example.org.