By the judgment dated October 5, 2022 (ref. T-168/21), the Court of Justice of the European Union  (CJEU) ruled on the distinctive character of a trademark representing the individual color blue (light blue: RAL 5012).

The registration of an individual color has been facing difficulties for years, so that (as the registration offices emphasize) it does not lead to their monopolization. Although in market practice colors increasingly serve functions that are not merely aesthetic, but are effectively associated with a particular entrepreneur, e.g. green or red gas stations, purple chocolate, navy blue creams, registration offices have consistently refused protection. Nevertheless, entrepreneurs continue to attempt registration, believing that their use of a particular color in the form of a designation of origin is unique.

 

 Applicant Magnetec GmbH, based in Germany, has applied for registration of the aforementioned mark (EUTM 018022608), which is an individual color for products in Classes 6, 9 and 17, including metal alloys, magnetic cores and insulating sheaths, among others. An individual color is a mark that is a single color. It must be distinguished from a combination of colors – a mark consisting of a number of different colors forming a single entity.

By the decision dated November 26, 2019, the examiner rejected the application for lack of distinctiveness of the mark. By the decision dated January 18, 2021 (Ref. R 217/2020-4), the Board of Appeal dismissed the appeal. This decision was appealed to the Court.

By the judgment described in this article, the Court overturned the appealed decision of the Board of Appeal. The Court held that the Board of Appeal had insufficiently defined the circle of recipients of some of the goods with the mark that was the subject of the application. This is because the distinctive character of a mark is assessed in relation to the goods or services for which registration is sought and in relation to the perception of the mark by the relevant public.

While considering the appeal, the Board found that the circle of recipients to some of the goods are professionals with a high degree of attention and technical knowledge in the field of electrical engineering.  Nevertheless, some of the goods are aimed at end consumers. In the Court’s view, the Board of Appeal did not define this circle of consumers in a sufficiently precise manner, which made it impossible to correctly assess the distinctive character of the mark, and consequently necessitated the annulment of the contested decision.

In its reasoning, the Court recalled its well-established jurisprudence, which shows, among other things, that colors “can be considered intrinsically distinctive only in exceptional circumstances, since they are linked to the appearance of the goods in question and are not, as a rule, used as a means of commercial origin [own translation].” What’s more, chances for registrations occur in cases where the applicant is able to demonstrate the so-called secondary distinctiveness of the trademark obtained through its intensive use.

It is difficult to predict whether the above-mentioned mark will be recognized as meeting that criterion. It is increasingly rare to obtain such protection, although market practice shows that single colors often provide an indication of the origin of goods. Only some of them have obtained registrations, such as the iconic purple for chocolate or magenta for telecommunications services. Several marks that are a single color are presented in the table below.

Trademark EUTM Appliacnt Classes
EUTM 011886777 RUD Ketten Rieger & Dietz GmbH u. Co. KG 6, 8 (steel chains, devices for chain harnesses)
EUTM 000773630 KWS SAAT SE & Co. KGaA 42 (technical  and business consultancy in the area of plant cultivation)
EUTM 000031336 Kraft Foods Schweiz Holding GmbH 30 (chocolate, pralines)
EUTM 000396176 Northern Technologies International Corporation 2, 16, 17 (anti corrosion agents, anti corrosive packaging)

 

In turn, the applicants failed to obtain protection for the colors shown below, among others:

Trademark EUTM Reason of rejection Applicant Classes
EUTM 009076209 Lack of distinctive character (decision of the Fifth Board of Appeal dated 1 Semptember 2011, ref. R 605/2011-1). UNIDELTA S.P.A. 17 (plastic)
EUTM 004607801 Lack of distinctive character (judgement of the Court dated 13 September 2010, ref. T‑97/08). KUKA Deutschland GmbH 7 (machined and welded products)
EUTM 000016139 Impossible to be represented on the Register in a manner which enables to determine the clear and precise subject matter of the protection (decision of the Third Board of Appeal dated 12 February 1998, ref. R 7/97-3). Orange Personal Communications Services Ltd. 9, 38, 42 (electrical and electronic communications and telecommunications)
EUTM 000036731 Lack of distinctive character (OAMI’s decision dated 15 February 1999). DKV Deutsche Krankenversicherung AG 36 (insurance underwriting)
EUTM 000711275 Lack of distinctive character (decision of the Fifth Board of Appeal dated 22 June 2000, ref. R 379/1999-1). Deutsche Post AG 16, 35, 36, 38, 39, 42 (philately, business management, telecommunications)