The difficulty of registering single colours and/or their combinations as trademarks is well known in the EU. However, it is easier to register a position mark, i.e. a mark the protection of which covers the use of a colour on a specific element of a product. In the present case, however, the applicant did not succeed in gaining protection. Certainly, the choice of colours, typical in the sector for which the applicant was seeking protection, was a significant obstacle.

On 11 September 2024, the Court dismissed Väderstad Holding AB’s action against the decision of the Board of Appeal of EUIPO, which refused to register a position trademark (Joint Cases T-361/23, T-362/23, T-363/23, T-364/23). 

In 2019, Väderstad Holding AB applied for trademark registration for the following marks indicated as position trademarks for goods in Classes 7 and 12 of the Nice Classification (Class 7: ‘Agricultural, gardening and forestry machines and apparatus; Agricultural machines; Agricultural machines; Robotic mechanisms used in agriculture; Agricultural machine tools’; Class 12: ‘Tractors for agricultural purposes; Trailers [vehicles]; Trailer hitches for vehicles’).

Based on Article 7(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council, the applications for registration of the marks were rejected for lack of distinctive character. Despite an appeal against the above decision, the Board of Appeal of the EUIPO upheld the refusal of the registration in its entirety, following which the applicant raised a plea of infringement of Article 7(1)(b) of the aforementioned Regulation, claiming that the Board of Appeal erred in finding that the marks lacked distinctive character in relation to certain goods.

The Board of Appeal found that the relevant public (i.e. a group of professionals in the agricultural sector) perceived the marks applied for and the combination of the colours red, yellow and black as a ‘simple variant of the colour combination used in the agricultural sector’ for safety and signalling purposes. The Board of Appeal considered that, in relation to certain goods, the marks applied for could not indicate commercial origin and were therefore devoid of distinctive character. Furthermore, the Board of Appeal emphasised the importance of the public interest, which prevented the unjustified restriction of the availability of colours to other traders when selling the same goods or services.

The applicant complained that the Board of Appeal:

• insufficiently considered the practice of using colours as position marks in the agricultural sector and the fact that farmers, i.e. the relevant public, are aware of it

The General Court pointed out that for colours or combinations of colours (in this case, a positional mark consisting of red, yellow and black) to distinguish company’s goods or services, they must be able to convey information regarding the origin of the product. However, it emphasised that colours in general have little ability to convey information because of their widespread use. Furthermore, the Court found no basis for establishing the distinctive character or origin of the marks applied for among the arguments put forward by the applicant The General Court therefore held that the Board of Appeal had taken due account of the existence of the practice of using colours as position marks in the agricultural sector and that the applicant’s complaint was therefore unsuccessful.

• incorrectly considered the use of the colours red, yellow and black on agricultural machinery to be an essential aspect of establishing the lack of distinctiveness of the marks

The Board of Appeal, relying on the examples cited by the applicant of the use of the colours red, yellow and black, considered that these were colours commonly used in the agricultural sector by various producers. The General Court emphasised that the fact that the colours making up a mark are commonly used in relation to the goods or services claimed by that mark is important in assessing its distinctiveness. If the colours in question are frequently used in a particular industry, they may have less of a function in indicating the origin of the goods or services. It therefore rejected the applicant’s arguments that the widespread use of the colours in question in the agricultural sector does not affect the distinctive character of the trademark.

• incorrectly considered the combination of the colours red, yellow and black to have a safety and signalling function

The Board of Appeal considered that the colours red, yellow and black have a signalling function in relation to the goods in question, particularly when the machinery is, for example, parked or on the road. The colour yellow is visible in low light conditions and the colour red, attracts the eye during the daytime and is commonly used for safety purposes on agricultural machinery. In addition, the Board highlighted that the colour black combined with yellow creates a contrast, which further enhances the visibility of the products. The Board of Appeal and subsequently also the Court considered that the ‘black and yellow ribbon’, contrary to the applicant’s claims, could not be regarded as a graphic distinctive element, as it has no distinguishing character and cannot convey information on the origin of the goods. Thus, in the Court’s view, the combination of the colours red, yellow and black was considered to be non-distinctive in the context of the marks, as it served primarily as a visibility and safety tool.

• did not examine the applied marks in their entirety

The Board of Appeal analysed the various elements of the marks applied for, considering the perception of the colours by the relevant public. The Board found that the colour combination of red, yellow and black is a simple variation of colours commonly used in the agricultural sector and has a safety function. The Board of Appeal considered the specific positioning of these colours on the goods at issue, considered the overall impression created by the marks applied for and the way they were perceived by the public, indicating that it had considered the sign as a whole. Thus, the Court found the applicant’s argument that the Board of Appeal had disregarded the overall assessment of the mark to be unfounded.

• incorrectly found that the functions performed by the mark other than indicating the origin of the goods were relevant

The applicant submits that the fact that the sign also performs other functions besides the function of indicating origin should not be relevant for the assessment of its distinctive character. However, as EUIPO rightly pointed out, this argument is irrelevant to the present case. Indeed, the main problem is that it has not been shown that the marks applied for could have had the function of indicating the origin of the goods or services. According to case law, a trademark must be capable of distinguishing the goods or services of one undertaking from those of another, which is its essential function. In this case, the marks applied for, in view of their signalling and safety functions and their widespread use in the agricultural sector, were not considered sufficiently distinctive to have the function of indicating origin. Consequently, the applicant’s arguments relating to the sign’s performance of other functions do not alter the assessment that the marks are not distinctive.

Eventually, the Court held that the applicant was not able to challenge the findings of the Board of Appeal, which considered the combination of colours on the mark applied for to be a colour combination commonly used in the agricultural sector without being able to indicate the origin of the goods. Consequently, the applicant had failed to prove an infringement of Article 7(1)(b) of Regulation 2017/1001 and the Court therefore dismissed the action in its entirety.

Conclusion

This judgment fits in with the theme of low distinctiveness of colours or colour combinations. Even in the case of position marks, applicants seeking protection may not reach for colours typically used in a particular sector. Colour or colour combinations are extremely rare to succeed in registering as trademarks, and most applications end in refusal.

However, there are some successful applicants who have been granted protection for goods in Class 12 of the Nice Classification. For example, registration of a colour or colour combination as a trademark has been achieved by Husqvarna AB (EUTM 004248399), as well as by BMW (EUTM 002467876). Nevertheless, such examples are very rare.