“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.”
“Mark consisting exclusively of one or several colors”
“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.”
“[21] It should therefore be established whether Article 2 of the Directive can be interpreted as meaning that 'combinations of colours' are capable of constituting a trade mark. [22] To constitute a trade mark under Article 2 of the Directive, colours or combinations of colours must satisfy three conditions. First, they must be a sign. Secondly, that sign must be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings (see, to that effect, Libertel, paragraph 23). [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. [25] Moreover, it is clear from the Court's case-law (Case C-273/00 Sieckmann[2002] ECR I-11737 , paragraphs 46 to 55, and Libertel, paragraphs 28 and 29) that a graphic representation in terms of Article 2 of the Directive must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified.”
“[27] The function of the requirement of graphic representation 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. [28] The entry of the mark in a public register has the aim of making it accessible to the competent authorities and to the public, particularly to economic operators. [29] 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 applications for registration and the publication and maintenance of an appropriate and precise register of trade marks. [30] On the other hand, economic operators must be able to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties. [31] In those circumstances, in order to fulfil its role as a registered trade mark, a sign must always be perceived unambiguously and uniformly, so that the function of mark as an indication of origin is guaranteed. 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 also be durable. [32] It follows from the above that a graphic representation for the purpose of Article 2 of the Directive must be, in particular, precise and durable. [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.”
“[40] Subject to the above, it must be accepted that for the purposes of Art.2 of the Directive colours and combinations of colours, designated in the abstract and without contours, may be capable of distinguishing the goods or services of one undertaking from those of other undertakings.”
“The colour purple (Pantone 2685C), as shown on the form of the application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.”
“[15] Some general points relating to the requirements of art.2 of the directive, which are relevant to this case, can be picked out of the judgments: The conditions (1) An application to register a trade mark must satisfy three conditions for the purposes of Article 2: (i) there must be a sign; (ii) it must be capable of graphical representation; (iii) it must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. Purpose (2) The purpose of the requirements is to prevent abuse of trade mark law in order to obtain an unfair competitive advantage. Identification (3) Identification requirements for entry of a trade mark on the public register of trade marks include clarity, intelligibility, specificity, precision, accessibility, uniformity, self-containment and objectivity. Multitude of forms (4) The identification requirements are not satisfied, if the mark could take on a multitude of different appearances, which would create problems for registration of the mark and give an unfair competitive advantage over competitors. Colour without a message (5) Colours are normally a simple property of things, or a means of decorating things. They are not normally capable of being a sign. A sign conveys a message. The sign is capable of being registered as a trade mark, if the message is about the source of goods or services. Colour as a sign conveying a message (6) Depending on the facts and circumstances of the case, colours, or combinations of colours, designated in the abstract and without contours and used in relation to a product or service are capable of being ‘a sign’. Graphic representation of colour (7) As for the second condition of graphical representation, in a mark consisting of two or more colours designated in the abstract and without contours, qualities of precision and uniformity are required. The colours must be arranged by associating them in a predetermined and uniform way. Colour without form/in a multitude of forms (8) Those requirements are not met by the mere juxtaposition of colours without shape or contours, or by reference to colours in every conceivable form, so that the consumer would not be able to recall or repeat with certainty the experience of a purchase. The scope of protection afforded by such a mark would be unknown both to the competent authorities responsible for maintaining the register and to economic competitors. Registration would confer unfair competitive advantages on the proprietor of the mark.”
“[49] At the end of all the argument below and in this court the outcome of the appeal turns on quite a narrow point on which the hearing officer and the judge erred in principle. [50] The crucial point stems from the misinterpretation of the verbal description of the graphic representation of the mark for which application is made. The description refers not only to the colour purple as applied to the whole visible surface of the packaging of the goods, but also to an alternative i.e. ‘or being the predominant colour applied to the whole visible surface … ’. The use of the word ‘predominant’ opens the door to a multitude of different visual forms as a result of its implied reference to other colours and other visual material not displayed or described in the application and over which the colour purple may predominate. It is an application for the registration of a shade of colour ‘plus’ other material, not of just of an unchanging application of a single colour, as in Libertel. [51] In my judgment, that description, properly interpreted, does not constitute ‘a sign’ that is ‘graphically represented’ within art.2. If the colour purple is less than total, as would be the case if the colour is only ‘predominant’, the application would cover other matter in combination with the colour, but not graphically represented or verbally described in the specific, certain, self-contained and precise manner required. The result would not be an application to register ‘a sign’, in the accepted sense of a single sign conveying a message, but to register multiple signs with different permutations, presentations and appearances, which are neither graphically represented nor described with any certainty or precision, or at all. [52] The appearance and number of such other signs would be unknown both to the registrar, who is responsible for the proper functioning of the registration system and is faced with the decision whether or not to register it on a public register, and to competitors, who would not be able to tell from inspecting the register the full scope and extent of the registration. To allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. It would also offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage.”
“[62] As this case shows, there are considerable potential problems in seeking to show that a pure colour mark is properly registrable. The tests referred to in [68] of the Libertel judgment are aimed, among other things, at ensuring that both registration authorities and actual or potential competitors know the scope of the mark which is applied for or has been registered. Such persons must be able to tell not only whether a given mark is within the scope of the registration applied for or effected, but also whether it is not within that scope. [63] Cadbury's formulation, with its use of the words ‘or being the predominant colour applied to the whole visible surface, of the packaging of the goods’ seems to me to fall far short of satisfying these tests. What is meant by ‘predominant’ in this context? Miss Himsworth's primary contention was that a colour was predominant, in this context, if it covered more than 50% of the surface area in question. If this is right, and if that is what was intended, then it might be possible to achieve certainty by spelling that out in the registration application. It could have read: ‘applied to the whole visible surface, or to more than 50% of the area of the visible surface, of the packaging of the goods’. But it is not difficult to imagine other tests which might be applied to determine predominance in respect of colour. If the contrast is between two different colours, one which is stronger or more eye-catching, or is applied to a more prominent part of the packaging, might be seen as predominant even if it was applied to a smaller area than another colour (including white). The evidence for Cadbury, to which Sir John Mummery has referred at [17] above, shows that Cadbury itself regarded other factors than the measured surface area as being relevant. In my judgment the use of the word ‘predominant’ in this context, makes the description of the mark too subjective, too imprecise, and inadequately clear and intelligible, to be capable of registration.”
“Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%-50%”
“[43] It also follows from the Libertel decision that a description of a sign may be required to fulfil the requirements of Article 4 CTMR, contrary to the CTM proprietor’s argument that a description is not obligatory pursuant to Rule 3(3) CTMIR [the Implementing Regulation]. In fact, a necessary description forms integral part of the sign’s graphical representation and thus also serves to define its scope of protection. Whilst the sign’s description indeed may not be used to broaden the scope of protection of what may be derived from the sign’s graphical representation itself (‘what you see is what you get’), it may therefore be indispensable to be taken into account when defining the sign’s subject matter.”
“[48] … As follows from above, the graphical representation and description must be evaluated in combination in order to define the sign’s scope of protection. Apart from indicating two colours, the sign’s description is confined to indicating a certain ratio of them. Evidently, the mere indication of such a ratio allows for the arrangement of the two colours in numerous different combinations, thus not in in a predetermined and uniform way. Depending on the arrangement of colours on different parts of ‘energy drinks’ or other objects related thereto, the overall impression of two colours arranged in numerous manners may be very distinct. The cancellation applicant has given various examples of possible arrangements which would fit the sign’s description. The average consumer could thus not repeat with certainty the experience of a purchase. This applies in particular for the category of marks at hand since colours possess little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message [ref to Libertel].”
“[50] The CTM proprietor argues that the reproduction of the sign defines the mark as consisting of the colour blue depicted on the left and the colour silver on the right hand side, (‘what you see is what you get’), and therefore limits possible arrangements to a degree which renders the signs sufficiently precise. However, as follows from above, in the case of a combination of colours per se, the description of the sign forms an integral part of the sign. Given the scope of protection which the choice of this category of mark encompasses, an explicit description to this effect would have been required in the present case. Furthermore, if the subject matter was to be restricted to the sign’s reproduction (i.e. the image filed), such interpretation would qualify the sign as a figurative mark, namely a coloured rectangular shape with blue on the left and silver on the right hand side. However, a sign may not be re-categorized following its registration [ref to authority].”
“[18] It is absolutely plain from the wording of Article 2 of Directive 2008/95 that designs are among the categories of signs capable of graphic representation. [19] It follows that a representation, such as that at issue in the main proceedings, which depicts the layout of a retail store by means of an integral collection of lines, curves and shapes, may constitute a trade mark provided that it is capable of distinguishing the products or services of one undertaking from those of other undertakings. Consequently, such a representation satisfies the first and second conditions referred to at paragraph 17 of this judgment, without it being necessary either, on the one hand, to attribute any relevance to the fact that the design does not contain any indication as to the size and proportions of the retail store that it depicts, or, on the other hand, to examine whether such a design could equally, as a ‘presentation of the establishment in which a service is provided’, be treated in the same way as ‘packaging’ within the meaning of Article 2 of Directive 2008/95.”
“…it must be held that the case raises questions of principle regarding the graphic representation of a mark consisting of colours per se in the application for registration and in the registration, at least so far as concerns the interaction between the description of such a mark and that graphic representation in order to satisfy the requirements of Article 4 of Regulation No 207/2009.”