“Type of mark figurative Representation of the mark attached Colour claimed Indication of colour(s) Gold and Black Description of the mark Gold Oval with Embossed BABEK writing”
“Signs of which a trade mark may consist A trade mark may consist of any signs 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; …”
“Representation of the mark (1) If the applicant does not wish to claim any special graphic feature or colour, the mark shall be reproduced in normal script, as for example, by typing the letters, numerals and signs in the application. The use of small letters and capital letters shall be permitted and shall be followed accordingly in publications of the mark and in the registration by the Office. (2) In cases other than those referred to in paragraph 1 and save where the application is filed by electronic means, the mark shall be reproduced on a sheet of paper separate from the sheet on which the text of the application appears. The sheet on which the mark is reproduced shall not exceed DIN A4 size (29,7 cm high, 21 cm wide) and the space used for the reproduction (type-area) shall not be larger than 26,2 cm × 17 cm. A margin of at least 2,5 cm shall be left on the left-hand side. Where it is not obvious, the correct position of the mark shall be indicated by adding the word ‘top’ to each reproduction. The reproduction of the mark shall be of such quality as to enable it to be reduced or enlarged to a size not more than 8 cm wide by 16 cm high for publication in the Community Trade Mark Bulletin. (3) In cases to which paragraph 2 applies, the application shall contain an indication to that effect. The application may contain a description of the mark. … (5) Where registration in colour is applied for, the representation of the mark under paragraph 2 shall consist of the colour reproduction of the mark. The colours making up the mark shall also be indicated in words and a reference to a recognized colour code may be added. …”
“… 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.”
“I … reject [counsel for Glaxo]’s submission that a mark consisting of one or more colours per se is defined by the pictorial representation showing how the colour or colours are to be applied. The verbal description of such a mark is also important and must be taken into account together with the pictorial representation. The graphical representation, comprising both the pictorial representation and the verbal description, must be considered as a whole.”
“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 Trade Mark consists of the colour yellow applied to the outer surface of the cylinder within which gas is contained.”
“The Trade Mark consists of the colour yellow applied to the outer surface of a cylinder within which gas is contained.”
“… I do not accept that the evidence on file establishes public recognition of the particular colour represented in the JPEG file as yellow. Even if some people are liable under some conditions to classify it as a shade of yellow, I have no doubt that there are plenty of other people who would be liable under the same or similar conditions to classify it as a shade of orange. And there lies the problem. People addressing themselves to the graphic representation of the sign with the assistance of the visual information provided by the JPEG file would, in my view, be left thinking that, if the visual information provided by the JPEG file is intended to demonstrate what the applicant means by use of the word ‘yellow’, it is not clear how far the coverage of the word and the visual information in combination should then be taken to extend.”
“The mark is limited to the colour red. The mark consists of a three-dimensional shape and is limited to the dimensions shown above.”
“63. Turning to marks containing colour which are not colour per se marks, it is of course the entire mark, including non-colour elements, which must be capable of distinguishing. However, the colour element may play a part in ensuring that it is and that in turn may depend on the colour being of a particular hue. … 67. … It seems to me that where a mark contains colour but is not a colour per se mark, the need for precision as to hue will depend on the extent to which other elements of the mark serve to make the mark capable of distinguishing. More exactly, it will depend on the extent to which the colour of the relevant feature of the mark contributes to making the mark capable of distinguishing and whether it is likely that only a particular hue will confer on the mark that capacity to distinguish. It will always be a question of fact and degree.”
“Although in Glaxo the Court of Appeal’s analysis took the categorisation of the mark as a colour per se mark to be a firm starting point, I do not believe that the Court of Appeal intended to formulate any rule of law about this. And the judgment of the CJEU in Hartwell implies that there is no such rule of law. However, often it will be the most useful starting point. Its advantage is that the categorisation chosen is an unambiguous statement about the protection sought for the mark, whereas the visual representation and verbal description, individually and/or taken together, may not be - as in Glaxo.”
“… section 47(1) of the 1994 Act provides that the registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of s.3. The statute requires the assessment to be conducted as of the date of registration. As of that date the competent authorities and the public were told that the proprietor intended the mark to be a figurative mark. Clarity and precision must be assessed accordingly.”
“83. It seems to me that, as was the case in Glaxo, the statement of the type of mark in the registration is a useful starting point. The statement was not ambiguous. The reader was told that it is a figurative mark. Here for convenience I use ‘reader’ as a compendious term for the competent authorities and the public. 84. In my view there is nothing inconsistent between this statement and the visual representation. The reader is told that this is a figurative mark and therefore a 2D mark, not a 3D mark. Accordingly, the visual representation could be and would have been understood to show a 2D mark with 3D visual effects. Such effects were hardly new in visual art. 85. The written description is not inconsistent with this either. ‘Embossed BABEK writing’ could, and in my view would, have been understood to mean that BABEK is represented with an embossed appearance, including shadows. 86. It is correct to say that in the visual representation the studs and the border are also shown have shadows to give a 3D effect. Arguably the same could be said of the textured background. Had the written description stated that only the BABEK writing is embossed, or alternatively that the studs and border are not embossed, there may have been a difficulty. As it is, I think the reader would have understood that the embossing effect is of principal significance in relation to the BABEK writing, and so it appears from the visual representation. Of less significance to the distinctiveness of the mark are the studs, border and textured background. 87. It was said that this nonetheless leaves the mark ambiguous since the reader would have been uncertain whether the studs, border and textured background should appear embossed or not. Such an argument suggests that a written description, if present, must always describe what is shown in the visual representation in every particular, with no detail left unsaid. I reject such an approach. I see no reason to suppose that the competent authorities and the public of s.1(1)(a) should be taken to consist of anxious pedants. A reasonable reader would have understood that important features will be referred to in the written description, while further and minor details appearing in the visual representation may not be. 88. Commission Regulation (EC) 2868/95 as amended permitted the filing of a trade mark application with no written description. The applicant for the Trade Mark could have done that. However, it does not alter the position that if a written description is filed it is to be interpreted by reference both to the visual representation and any statement as to the type of mark for which protection is sought. For the reasons I have given, the reasonable reader would have understood what was intended. … 91. Iceland points out that the oval is described as gold but the colours claimed are both gold and black. However, the description also says that the word BABEK is embossed. To create the embossed effect there are shadows, which accounts for the reference to black. 92. Iceland’s next point is that there is no true black shown. Considered over-literally that is true. But there is no inconsistency. A reasonable reader would understand that what is meant by black are the dark shadows, which could not sensibly be described as gold in colour and are approximately black. 93. Iceland was able to find 25 pantone hues which, it says, might all be described as hues of gold, in metallic and non-metallic varieties. The same argument was made in respect of black, for which 18 pantone hues were found. Looking at these as presented at the hearing I am not sure that they could all be described as gold or black, but this is not to the point.”
“100. In relation to s.1(1)(a), in my view the reasonable reader of the registration of the Trade Mark would have understood that the mark is a figurative mark as shown in the visual representation. The written description does not tell the reader much more save that the embossed effect used for the BABEK writing is of particular significance. The lack of much further information need not matter, provided there is no inconsistency. The colours of the Trade Mark are as shown in the visual representation. It was not necessary for the competent authorities or the public to be informed of Pantone numbers because precise hues are not important to making the Trade Mark to satisfy the Sieckmann criteria. Aside from that, the shading of one colour to another in the visual representation would unhelpfully require a long list of pantone numbers. 101. Looking at this in more detail, the absence of Pantone numbers does not lead to the result that the Trade Mark has multiple forms. It has one single form, that shown in the visual representation, subject to minor variations in hue which would not lead the reasonable reader to think that there is a lack of clarity or precision. For the same reason there is no ambiguity. The Trade Mark as shown is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The Sieckmann criteria are satisfied. 102. Iceland’s final point was that there are colours in the visual representation which are not strictly either gold or black. That is true, but to my eye the impression delivered by the visual representation is of a trade mark coloured gold with shading. The shading is in approximations of black. 103. In my judgment, arriving at the conclusion that the verbal representation in the registration of the Trade Mark is inconsistent with the written description would need an assumed degree of pedantry on the part of the competent authorities and the public which, if required in law, would make the trade mark system unworkable.”