Court Rules on Colour Combinations: Systematic Arrangement Alone Insufficient for Registration
The General Court of the European Union has dismissed an appeal by OMV AG challenging a blue and green color combination mark for fuel-related goods and services. The EU Intellectual Property Office (EUIPO) and the Board of Appeal both refused protection for the mark on grounds of lack of distinctiveness.
The ruling, which refers to the Libertel case principles and Heidelberger Bauchemie case law, emphasises the importance of considering consumer perception and the common use of colours in specific markets. It also clarifies that the EUIPO Guidelines cannot override established case law principles.
The mark, consisting of gentian blue (RAL 5010) and yellow green (RAL 6018) colours, was considered as just a "systematic arrangement of two colours". The General Court found that evidence filed by OMV, including market studies from 2022-2023, was insufficient to demonstrate distinctiveness and were conducted after the application date.
The General Court found nothing wrong with the Board of Appeal's distinctiveness analysis, which considered the common use of blue and green colours in the filling station market and the fact that the specific tones and arrangement did not enable the relevant public to perceive the mark as indicating commercial origin.
The distinctiveness requirements for colour combination marks in EU trade law, as clarified by the General Court's ruling on OMV AG's case, are stringent. A colour combination mark must inherently distinguish the goods or services of one undertaking from those of others. The mere systematic arrangement of colours is not sufficient for registration.
To prove distinctiveness, especially acquired distinctiveness, the applicant must provide substantial evidence. In OMV AG's case, the General Court found that market studies conducted after the application date were insufficient to establish distinctiveness.
If colours are commonly used in a specific market, this can undermine the distinctiveness of the mark. The specific tones and arrangement of colours must enable the relevant public to perceive the mark as indicating commercial origin.
The risk of unduly restricting the availability of colours for competitors is a factor in assessing distinctiveness. While this risk is generally lower for colour combinations than for single colours, it must still be considered.
Brand owners need to be aware that colour combination marks face similar stringent distinctiveness requirements as single colour marks. The General Court emphasised that the EUIPO Guidelines are not binding legal acts for interpreting EU law provisions.
In conclusion, for a colour combination mark to be registered as an EU trade mark, it must satisfy all conditions under Article 7 of Regulation 2017/1001, including the ability to distinguish goods or services, and overcome common use and public interest considerations. OMV filed an international registration designating the EU for the mark on 27 January 2021.
- In light of the General Court's ruling on OMV AG's case, the distinctiveness requirements for colour combination marks in EU trade law are stringent, requiring the mark to inherently distinguish the goods or services of one undertaking from those of others, and the mere systematic arrangement of colours is not sufficient for registration.
- If colours are commonly used in a specific market, this can undermine the distinctiveness of the mark. To prove distinctiveness, especially acquired distinctiveness, the applicant must provide substantial evidence that the specific tones and arrangement of colours enable the relevant public to perceive the mark as indicating commercial origin.
- Brand owners need to be aware that colour combination marks face similar stringent distinctiveness requirements as single colour marks. While evaluating distinctiveness, the EUIPO considers public interest and the risk of unduly restricting the availability of colours for competitors, especially in cases of common use of colours in specific industries, such as the filling station market.
