Inherent distinctiveness – one colour vs. colour combinations
The EUIPO’s practice is very strict in cases where applicants wish to protect one abstract colour, such as the fictional mark below:
At the date of this publication, there are only 24 EU trademarks on the register protecting a single colour that were registered based on their inherent distinctiveness. This limited number of successful registrations, particularly in the last few years, is testament to the high threshold for proving a single colour mark’s inherent distinctiveness. The requirements for inherent distinctiveness were laid down in the Libertel judgment (C-104/01), namely that
- the number of goods or services for which the mark is claimed is very restricted and
- the relevant market is very specific.
Where the colour mark protects highly specialised goods or services, owners of abstract colour marks are well advised to outline the market particularities to the EUIPO, as it cannot (understandably) be assumed that EUIPO examiners are familiar with these or can find sufficient and reliable information online.
In contrast, the threshold for obtaining protection for a colour combination comprising two or more colours is lower. Two fictitious examples of colour combinations are included below:
The EUIPO has accepted more than 250 colour marks protecting two or more colours. However, in these cases possible issues may concern the trademark’s graphic representation or whether the description of the mark is sufficiently clear for the purposes of Article 7(1)(a) EUTMR (see CJEU in C-124/18 P).
When applying for trademark protection for abstract colour, close attention should be paid to Article 2(2) of the EU Trade Mark Implementing Regulation (EUTMIR), which states that the application may include a claim that the sign has acquired distinctive character through use, as well as an indication of whether this claim is meant as a principal or subsidiary one.
If the applicant makes a principal claim, the EUIPO will take only one decision both on the trademark’s inherent distinctiveness and, if the trademark lacks inherent distinctiveness, on the acquired distinctiveness through use. The second option is to make the claim as a subsidiary one. In this case the Office will take two separate decisions. The EUIPO will first decide on the trademark’s inherent distinctiveness. This decision can be appealed separately. Once the EUIPO’s decision finding lack of inherent distinctiveness has become final, it will issue a second decision on the claim of acquired distinctiveness through use. The route of a subsidiary claim is recommendable where the Libertel-criteria are fulfilled, namely that the trademark seeks protection for a limited number of goods, and the market is very specific.
The owner of an abstract colour mark may also take advantage of the subsidiary claim in invalidity actions based on absolute grounds against its colour mark. Here, the trademark owner may ask the Office to take a decision on the mark’s inherent distinctiveness first, and only if this is denied, on the acquired distinctiveness claim (see EUIPO Guidelines, Part D, Section 2, point 3.2).
Acquired distinctiveness – the importance of surveys
If the applicant needs to show that its abstract colour mark has acquired distinctiveness, i.e. that the relevant public perceives the colour as in indication of commercial origin in the entire EU, surveys will be the key instrument to do so. The importance of surveys as one of the most direct kinds of evidence showing the actual perception of the relevant public is also recognized by the EUIPO (EUIPO Guidelines, Part B, Section 4, Chapter 14, point 8.2).
Conducting surveys is a highly cost-intensive undertaking, which is why prior to conducting surveys, trademark owners should work closely with a market survey company to ensure that the surveys have probative value and thus will be accepted by the EUIPO or the European Courts. The following non-exhaustive factors should be considered:
- The first point to decide on is the number of surveys to be conducted. While no provision in the EUTMR requires that acquired distinctiveness through use be established by separate evidence in each individual Member State (Joined Cases C‑84/17 P, C‑85/17 P and C‑95/17 P, para. 80), applicants need to choose very carefully where to conduct surveys. This is because survey results may need to be extrapolated to member states with comparable market situations, be it based on geographic, cultural or linguistic proximity.
- A further point to consider is the method, namely whether to conduct surveys online or face-to-face (setting pandemic restrictions to one side for now). Even though there is no case-law to say that online surveys lack probative value per se, it is recommendable to monitor the decision practice and consult with the independent research institute as to which method is preferable and appropriate for the respective trademark.
- Furthermore, it is important to define the relevant public based on the goods or services protected by the colour mark. In particular, it needs to be established whether the relevant public comprises both the general and a professional public, and if so which concrete professions belong to the professional public.
- The sample size will depend on whether the relevant public is the general public or the professional public. The draft Common Practice 12: Evidence in trademark appeal proceedings (version: 29 May 2020) states that a sample size of 1.000 to 2.000 respondents for surveys concerning the general public could be sufficient. In relation to patients, the General Court recently considered sample sizes of 50, 106 and 200 as “much too low be reliable” (see T-187/19, para. 101).
- Lastly, the questionnaire will be drafted by the independent research institute. One of the key aspects here is to avoid leading questions. In particular, in relation to colour marks, the survey should represent the concrete colour as registered or applied for and its Pantone code (see T-187/19, para. 103 and 104).
Take away points:
- Decide whether filing for one colour or a combination of colours
- Take advantage of principal or subsidiary claim in examination proceedings and invalidity actions
- Work closely with independent research institutes to ensure that surveys have probative value, in particular bearing in mind the method, the relevant public, the sample size and the questionnaire.
Authored by Christine Stoeber
