“Signs of which a trade mark may consist A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”
“The following shall not be registered or if registered shall be liable to be declared invalid: (a) signs which cannot constitute a trade mark; …”
“… a colour per se cannot be presumed to constitute a sign. Normally a colour is a simple property of things. Yet it may constitute a sign. That depends on the context in which the colour is used. Nonetheless, a colour per se is capable, in relation to a product or service, of constituting a sign.”
“The trade mark applied for consists of the applicant’s corporate colours which are used in every conceivable form, in particular on packaging and labels. The specification of the colours is: RAL 5015/HKS 47 – blue RAL 1016/HKS 3 – yellow.”
“23. As the Court has already held, colours are normally a simple property of things (Libertel, paragraph 27). Even in the particular field of trade, colours and combinations of colours are generally used for their attractive or decorative powers, and do not convey any meaning. However, it is possible that colours or combinations of colours may be capable, when used in relation to a product or a service, of being a sign. 24. For the purposes of the application of Article 2 of the Directive, it is necessary to establish that in the context in which they are used colours or combinations of colours which it is sought to register in fact represent a sign. The purpose of that requirement is in particular to prevent the abuse of trademark law in order to obtain an unfair competitive advantage.”
“Colours or combinations of colours which are the subject of an application for registration as a trade mark, claimed in the abstract, without contours, and in shades which are named in words by reference to a colour sample and specified according to an internationally recognised colour classification system may constitute a trade mark for the purposes of Article 2 of [the Directive] where: – it has been established that, in the context in which they are used, those colours or combinations of colours in fact represent a sign, and – the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way. …”
“19. As Dyson has stated on a number of occasions both in its written observations and at the hearing, and as the national court itself noted in its order for reference, the application does not seek to obtain registration of a trade mark in one or more particular shapes of transparent collecting bin – the shapes represented graphically on the application form being only examples of such a bin – but rather to obtain registration of a trade mark in the bin itself. It is, moreover, common ground that those marks consist not of a particular colour, but rather in the absence of any particular colour, namely transparency, which enables the consumer to see how much dust has been collected in the collecting bin and to know when the bin is full. 20. It follows that the trade mark application in the main proceedings covers all the conceivable shapes of a transparent collecting bin forming part of the external surface of a vacuum cleaner.”
“35. In the present case, it is common ground that the subject-matter of the application in the main proceedings is not a particular type of transparent collecting bin forming part of the external surface of a vacuum cleaner, but rather, in a general and abstract manner, all the conceivable shapes of such a collecting bin. 36. In that regard, Dyson cannot maintain that the subject-matter of its application in the main proceedings is capable of being perceived visually. What consumers can identify visually is not so much the subject-matter of the application as two of Dyson’s graphic representations as contained in the application. Those representations cannot be assimilated to the subject-matter of the application because, as pointed out by Dyson on a number of occasions, they are merely examples of it. 37. It follows that, unlike the applications which gave rise to the judgments in Sieckmann and Shield Mark, the subject-matter of the application in the main proceedings is capable of taking on a multitude of different appearances and is thus not specific. … the shape, the dimensions, the presentation and composition of that subject-matter depend both on the vacuum cleaner models developed by Dyson and on technological innovations. Likewise, transparency allows for the use of various colours. 38. Given the exclusivity inherent in trade mark right, the holder of a trade mark relating to such a non-specific subject-matter would obtain an unfair competitive advantage, contrary to the purpose pursued by Article 2 of the Directive, since it would be entitled to prevent its competitors from marketing vacuum cleaners having any kind of transparent collecting bin on their external surface, irrespective of its shape. 39. It follows that the subject-matter of the application at issue in the main proceedings is, in actual fact, a mere property of the product concerned and does not therefore constitute a ‘sign’ within the meaning of Article 2 of the Directive (see, to that effect, Libertel, paragraph 27).”
“The mark consists of a three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10”
“The first condition 47. In my judgment the Tile Mark does not comply with the first condition for the following reasons. As Zynga rightly contends, the Tile Mark covers an infinite number of permutations of different sizes, positions and combinations of letter and number on a tile. Furthermore, it does not specify the size of the tile. Nor is the colour precisely specified. In short, it covers a multitude of different appearances of tile. It thus amounts to an attempt to claim a perpetual monopoly on all conceivable ivory-coloured tile shapes which bear any letter and number combination on the top surface. In my view that is a mere property of the goods and not a sign. To uphold the registration would allow Mattel to obtain an unfair competitive advantage. The second condition 48. Even if the Tile Mark complies with the first condition, in my judgment it does not comply with the second condition since the representation is not clear, precise, intelligible or objective. As discussed above, the representation covers a multitude of different combinations. It does not permit the average consumer to perceive any specific sign. Nor does it enable either the competent authorities or competitors to determine the scope of protection afforded to the proprietor, other than that it is very broad.”
“The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”
“In brief, the description of the mark as including not just the colour purple as a sign, but other signs, in which the colour purple predominates over other colours and other matter, means that the mark described is not ‘a sign.’ There is wrapped up in the verbal description of the mark an unknown number of signs. That does not satisfy the requirement of ‘a sign’ within the meaning of Article 2, as interpreted in the rulings of the CJEU, nor does it satisfy the requirement of the graphic representation of ‘a sign’, because the unknown number of signs means that the representation is not of ‘a sign.’ The mark applied for thus lacks the required clarity, precision, self-containment, durability and objectivity to qualify for registration.”
“46. That graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified. 47. Such an interpretation is required to allow for the sound operation of the trade mark registration system. 48. First, the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor. 49. Next, the entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators. 50. On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of registration applications and to the publication and maintenance of an appropriate and precise register of trade marks. 51. On the other hand, economic operators must, with clarity and precision, be able to find out about registrations or applications for registration made by their current or potential competitors and thus to receive relevant information about the rights of third parties. 52. If the users of that register are to be able to determine the precise nature of a mark on the basis of its registration, its graphic representation in the register must be self-contained, easily accessible and intelligible. 53. Furthermore, in order to fulfil its role as a registered trade mark a sign must always be perceived unambiguously and in the same way so that the mark is guaranteed as an indication of origin. In the light of the duration of a mark’s registration and the fact that, as the Directive provides, it can be renewed for varying periods, the representation must be durable. 54. Finally, the object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Consequently, the means of graphic representation must be unequivocal and objective. 55. In the light of the foregoing observations, the answer to the first question must be that Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”
“33. Accordingly, a graphic representation consisting of two or more colours, designated in the abstract and without contours, must be systematically arranged by associating the colours concerned in a predetermined and uniform way. 34. The mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’, as is the case with the trade mark which is the subject of the main proceedings, does not exhibit the qualities of precision and uniformity required by Article 2 of the Directive, as construed in paragraphs 25 to 32 of this judgment. 35. Such representations would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to repeat with certainty the experience of a purchase, any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark.”
“36. By its second question, the referring court asks, in essence, whether Article 2 of Directive 2008/95 must be interpreted as precluding the registration of a mark, such as that at issue in the main proceedings, submitted, in the application for registration, in the form of a drawing of a colour mark. 37. In the present case, the referring court states that, according to the application for registration submitted by Hartwall, the sign protection of which is sought is represented by a colour drawing with defined contours, whereas the classification given by Hartwall to the mark registration of which is sought is that of a colour combination without contours. 38. In that regard, it should be noted that, according to the Court’s settled case-law, a sign may be registered as a mark only if the applicant provides a graphic representation in accordance with the requirement in Article 2 …, to the effect that the subject matter and scope of the protection sought are clearly and precisely determined (see, to that effect, … Libertel, … paragraph 29 and the case-law cited). 39. The verbal description of the sign serves to clarify the subject matter and scope of the protection sought under trade mark law (see, to that effect, … Shield Mark, … paragraph 59, and, as an example, … Heidelberger Bauchemie, … paragraph 34). 40. … when the trade mark application contains an inconsistency between the sign, protection in respect of which is sought in the form of a drawing, and the classification given to the mark by the applicant, the consequence of which is that it is impossible to determine exactly the subject matter and scope of the protection sought under trade mark law, the competent authority must refuse registration of the mark on account of the lack of clarity and precision of the trade mark application. 41. In the present case, the sign protection in respect of which is sought is represented by a figurative drawing, whereas the verbal description relates to a protection concerning two colours alone, that is, blue and grey. Moreover, Hartwall has clarified that it seeks to register the mark at issue as a colour mark. 42. Those circumstances appear to reveal an inconsistency showing that the application for protection under trade mark law is unclear and imprecise. 43. Consequently, the answer to the second question is that Article 2 … must be interpreted as precluding, in circumstances such as those in the main proceedings, the registration of a sign as a mark due to an inconsistency in the application for registration, which it is for the referring court to ascertain.”
“Where the application is accompanied by a verbal description of the sign, that description must serve to clarify the subject matter and scope of the protection sought under trade mark law and such a description cannot be inconsistent with the graphic representation of a trade mark or give rise to doubts as to the subject matter and scope of that graphic representation (see, to that effect, … Hartwall at paragraphs 39 and 40).”
“… the General Court did not err in law in concluding, in the judgment under appeal, that the registration of a mark which allows for a plurality of reproductions that are neither determined in advance nor uniform is incompatible with Article 4 of Regulation No 207/2009 and … Heidelberger Bauchemie ….”
“The trade mark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler.”
“The reasons for these requirements are plain to see. A mark must always be perceived unambiguously if it is to fulfil its function as an indication of origin. Moreover, the authorities must refuse to register the sign if, upon opposition by the proprietor of an earlier trade mark, the sign is found to be identical to the earlier mark and if the products or services for which registration is sought are identical with those for which the earlier mark is protected. So also, upon opposition by the proprietor of an earlier trade mark, the authorities must refuse to register the sign where, by virtue of its identity or similarly with an earlier mark and the identity or similarity of the relevant goods or services, there exists a likelihood of confusion. Similarly, the owner of a registered trade mark is entitled to prevent a third party from using a sign which is identical to his mark for goods or services which are identical to those for which the mark is protected. He can also prohibit the use of a sign where, by virtue of its identity or similarity with the mark and the identity or similarity of the relevant goods or services, there exists a likelihood of confusion. As Advocate General Philippe Leger explained in his opinion in Heidelberger at [56], assessment of notions of ‘identity’ and ‘risk of confusion’ necessarily implies a precise knowledge of the sign and mark in question, as they are or as they may be seen by the public concerned.”
“Stepping back, I believe that the public, including economic operators, looking at the certificate of the Trade Mark on the register, would be left in a position of complete uncertainty as to what the protected sign actually is. In the words of the Board of Appeal in the Seven Towns case, they would be left scratching their heads. [Counsel for Sandoz] submits and I incline to agree, that the third possible interpretation is the best (or at any rate the least bad) of the three for it provides a way of reconciling the INID code, the pictorial representation and the verbal description. However, this is far from clear. In my judgment, the Trade Mark lacks the clarity, intelligibility, precision, specificity and accessibility that the law demands. Moreover, I have no doubt that it would not be perceived unambiguously and uniformly by the public. It also offends against the principle of fairness because the uncertainty as to what the subject matter of the mark actually is gives Glaxo an unfair competitive advantage. These deficiencies in the Trade Mark are compounded by the range of alternatives that the second and the third possible interpretations encompass. Just as in Heidelberger, each of them allows for numerous different combinations of the dark and light purple colours. Consequently, neither of them exhibits the qualities of precision and uniformity required by Article 4 of the EUTMR.”
“The colour orange is applied to the top of the housing of the chain saw and the colour grey is applied to the bottom of the housing of the chain saw”
“Do the adidas Marks (and each of them) constitute signs represented in the register in a manner which enables the determination of the subject matter of the registration with sufficient clarity and precision?”
“TB’s general objections to the adidas Marks set out in written submissions are fivefold, namely that (i) the mark can be represented in an impermissible multitude of forms; (ii) the [written] description of the mark is inconsistent with the graphic representation [i.e. the pictorial representation]; (iii) there is a lack of clarity and precision in the description; (iv) there is a lack of clarity as to colouring and (v) many of the marks are objectionable because they contemplate ‘unrepresented signs’ (i.e. a complaint arising by reference to the Dyson decision). However, at one point in his closing submissions, Mr Roberts expressed the view that the question of registrability may well ‘collapse down’ to what the degree of variation within the adidas Marks may properly be said to be upon interpretation of those marks and whether such variation is permissible or not.”
“135. … the mere fact that a mark includes a number of possible variations or permutations will not inevitably render it invalid. It may very well do so, but it is clear from the authorities to which I have referred that the issue must be determined having regard to the considerations set forth above and the specific facts of the case. The degree of precision required in any case (and thus the extent of the permissible variations) will depend on the nature of the mark itself. It is clear from the authorities to which I have referred that colour marks give rise to very specific and particular issues which may not arise in relation to other types of marks. 136. Support for this conclusion may be found in Kerly’s Law of Trade Marks and Trade Names (seventeenth edition) which points out at 2-066 that a word mark, which is represented by the word in capitals in plain type, will cover the word in a wide range of typefaces because the representation is clear and precise …. 137. However, consistent with my view that everything will turn on the individual mark itself, Kerly goes on to say (also at 2-066) that: ‘[t]here are other marks where the degree of permissible variation is going to be very small indeed, if not practically non-existent. It may well prove easier to justify permissible variation where the variation occurs in the actual use made of the mark, so that it can be seen and/or proved that the public see the same mark’ (emphasis added). I understand this to be a short hand for saying that if the public were to be exposed to all possible permutations of the mark, it would not be confused as to origin - it is in that sense it would ‘see the same mark’. However, even then, Kerly acknowledges that in many cases (though not invariably) the notion of permissible variation ‘has to be expressed in a series of images or marks’.” ‘[t]here are other marks where the degree of permissible variation is going to be very small indeed, if not practically non-existent. It may well prove easier to justify permissible variation where the variation occurs in the actual use made of the mark, so that it can be seen and/or proved that the public see the same mark’ (emphasis added). I understand this to be a short hand for saying that if the public were to be exposed to all possible permutations of the mark, it would not be confused as to origin - it is in that sense it would ‘see the same mark’. However, even then, Kerly acknowledges that in many cases (though not invariably) the notion of permissible variation ‘has to be expressed in a series of images or marks’.”
“Finally I should return to the reasoning in Dyson for a slightly different point upon which TB relies. In that case the graphic representations of the sign were expressly said by Dyson to be ‘merely examples of it’. Accordingly, while consumers could identify visually those graphic representations they could not be ‘assimilated to the subject matter of the application’ (at [36]). Instead, the subject matter of the application ‘is in actual fact a mere property of the product concerned and does not therefore constitute a “sign”’ (at [39]). It is TB’s case that the CJEU made clear in Dyson that it is not acceptable to have a description which allows for what TB describes as ‘additional unrepresented signs’, i.e. signs which are not depicted in the graphic representation because that representation is merely said to be an ‘example’. TB frames this as an additional answer to the ‘permissible variations’ point. Specifically, TB says that variations are impermissible if they are not depicted and can only be understood having regard to the wording of the description. I shall return to this point when considering the adidas Marks in due course.”
“181. Although the description does not refer to the illustration, reading the two together (as I must) suggests that the illustration is intended to show the position of the Mark on an upper garment with sleeves. Thus it shows the three stripes running the full length of the sleeve (save for the cuff) and also shows that the stripes are located on the outer lateral surface of the sleeve (albeit that this is not specified in the description). Absent the words ‘running along one third or more’ it would not be difficult to interpret this Mark as being restricted to what is shown in the illustration. However, that would be to ignore those words, which to my mind convey the intention that the Mark may take different forms, or to put it another way, that the illustration is intended as an example only. 182. That this is a correct interpretation of the Mark is acknowledged by adidas … … 191. Examples of the potential variations encompassed within this Mark owing to the fact that the length of the stripes may differ and their starting and finishing point on the sleeve is not fixed were amply illustrated within … the Cancellation Division’s decision …, as follows: 192. For a long sleeved garment, the stripes might start at the collar and run to the elbow, they might start at the cuff and run to the elbow, they might run across the elbow but not reach as far as either the collar or the cuff, they might together be many differing lengths as long as they cover more than one third of the length of the sleeve. Similar variations will apply to a short sleeved garment where the proportions will obviously be very different. None of these variations is illustrated or contemplated in the pictorial representation and I disagree that they are properly to be regarded as ‘minor’. Indeed I note in this regard that the Cancellation Division focuses on ‘minor differences in the lengths of the stripes’ whilst apparently not also paying full attention to what I consider to be the significant difference in appearance caused by the fact that the starting and finishing point of the stripes is not fixed. 193. Furthermore, once one accepts that the pictorial illustration can only be an example and that the length, the starting point and the finishing point of the three stripes may change, it is difficult to see why the actual position of the stripes running along the sleeve may not also change. There is nothing in the description to indicate that the stripes are to be on the outer lateral side of the sleeve (as opposed to, say, the underside of the sleeve). 194. Accordingly I cannot see that the description of the mark when read in conjunction with the pictorial representation is clear and precise. Although the words in the description ‘one third or more’ are clear in themselves, what this might mean in practice, given the example that has been chosen to illustrate the Mark showing only stripes running the full length of a sleeve from collar to cuff, is very far from clear. It certainly involves a number of unrepresented signs. 195. I accept that the pictorial representation is not in itself inconsistent with the description, in that the stripes shown in the graphic do indeed run along ‘one third or more’ of the length of the sleeve, but once it is appreciated that this is intended only as an example, I cannot see that it assists in providing clarity. I disagree with adidas that taking the Mark as a whole, the relevant public would perceive a single sign with only a limited degree of variation relating to the length of the stripes, as explained in the text. In my judgment, on its proper reading, the public would perceive a sign which is intended to cover a wide variety of different forms, none of which (with the exception of the example given in the illustration) is readily ascertainable from the words and illustration used; it would be wholly unclear what the mark consists of. Applying the formulation used by Kerly to which I have referred above, I do not consider that the public, if exposed to every possible permutation, would ‘see the same mark’. Furthermore, the confusion created by this state of affairs precludes the potential for consumers to (in the words of the Cancellation Division) recall ‘one particular combination and therefore repeat their purchasing experience’. 196. In the circumstances, I consider that this Mark fails to satisfy the identification requirements in the TMA. It does not correspond to one single, clear precise, objectively ascertainable sign. The mark will not always be perceived unambiguously or uniformly and it follows that the authorities and the public will be left in a state of confusion as to the nature and scope of the sign. Contrary to the principles that lie behind section 1(1) TMA 1994, this would give adidas an unfair competitive advantage.”