INTA, MARQUES and OMV v CJEU, General Court and BoA – The trade mark battle of the year?

When two heavyweights such as INTA and MARQUES enter the ring and file statements in intervention with the General Court, you can bet that the case is interesting. INTA and MARQUES are doing nothing more than challenging the consistent case law of the Court of Justice of the EU (‘CJEU’) and the General Court on colour combination trade marks.

Ever since the Libertel judgment of the CJEU (case C-104/01), applicants of colour trade marks have had a difficult life. There, the CJEU found that single colour marks are, in principle, non-distinctive.

The CJEU and the General Court have applied this case law to colour combinations (less clear Heidelberger Bauchemie, case C‑49/02, IPKat here; pretty clear e.g. case T-655/13 at paras. 21 et seqq.) and colour position trade marks (e.g. case T-277/22 at para. 18).

As a consequence, colour and colour combination marks have only been registered if acquired distinctiveness was established (Art. 7(3) EUTMR). Doing this for the entire EU is a challenging endeavour.

The European Union Intellectual Property Office (‘EUIPO’) has adopted an approach that differs from this case law. While they agree that single colours lack, in principle, inherent distinctiveness, the Office considers colour combinations to be distinctive, unless there are specific circumstances that render the sign non-distinctive (Part B, Section 14 of EUIPO’s Guidelines).

The EUIPO deemed such special circumstances to exist for the colour combination blue and green of the Austrian oil, gas and petrochemical company OMV Aktiengesellschaft (‘OMV’), which operates gas stations.

Background

On 27 January 2021, OMV designated the EU in its international registration no. 01593116 for the colour mark

It covered a broad range of goods and services in classes 1, 4, 35, 37, 39, 40, 42, 43, 44, including the following:

Class 1: Chemical preparations for use as additive to fuels for improving combustion; chemical additives to motor fuel; hydrogen.

Class 4: Fuels; non-chemical additives for fuels; illuminants; electrical energy; lubricants; industrial oil.

Class 35: Retail services in relation to vehicle equipment, namely lubricants, brake fluid, chemical and non-chemical additives for fuels and lubricants, antifreeze, cleaning and fragrancing preparations; retail services in relation to vehicle parts, fuels, engine oils; wholesale and retail services in relation to chemical substances, chemical materials and chemical preparations, and natural elements for industrial or scientific use, hydrogen, fuels, chemical or non-chemical additives for fuels, illuminants, lubricants, industrial oil, hot water, medicinal and mineral water.

Class 37: Building, construction or demolition of facilities or installations for exploration, exploitation, processing, production, storage, transport or distribution of hydrocarbons, hydrogen, minerals, bitumen, fuels, illuminants, lubricants, industrial oil or energy; installation, cleaning, repair or maintenance of facilities or installations for exploration, exploitation, processing, production, storage, transport or distribution of hydrocarbons, hydrogen, minerals, bitumen, fuels, illuminants, lubricants, industrial oil or energy; refuelling of land vehicles; recharging services for electric vehicles; vehicle service stations [refuelling and maintenance]; automobile cleaning and car washing.

OMV indicated the colours to be gentian blue (RAL 5010) and yellow green (RAL 6018).

The EUIPO examiner partially refused OMV’s trade mark for the goods and services mentioned above, arguing that the trade mark lacked distinctiveness (Art. 7(1)(b) EUTMR).

OMV appealed to the EUIPO’s Board of Appeal (‘BoA’). OMV had submitted a large amount of evidence, including market surveys for Austria, Hungary, Romania and Slovakia.

The BoA dismissed the action (R 798/2023-5). It did not consider the market surveys to be relevant because OMV had not relied on acquired distinctiveness as a primary but rather as a subsidiary claim, meaning that the EUIPO will only examine acquired distinctiveness once the decision on inherent distinctiveness has become final (Art. 2(2) EUTMIR).

The BoA referred to the CJEU’s and the General Court’s case law on colour trade marks and held that, whilst colours or colour combinations are capable of conveying certain associations of ideas and of arousing feelings, they are unlikely to communicate specific information, especially since they are commonly and widely used in order to advertise and market goods or services, without any specific message. Since the number of colours actually available is limited, a small number of trade mark registrations could exhaust the entire range of the colours available.

In the case of a colour or colour combination, distinctiveness without any prior use was inconceivable to the BoA, save in exceptional circumstances, particularly where the number of goods or services is very restricted and the relevant market very specific.

The BoA found that the colour blue was often used to distinguish products that respect the environment and the colour green would be perceived as a reference or allusion to the environmental-friendly characteristics of the goods and services.

Consequently, each colour individually lacked distinctive character. The combination of both colours did not confer the minimum level of distinctiveness because the BoA saw no indication that the combination would amount to more than the sum of the individually non-distinctive elements.

In addition and by reference to the following examples, the use of green and blue as well as combinations thereof were found to be common in the automotive sector:

The BoA concluded that OMV’s trade mark lacked distinctiveness.

OMV appealed to the General Court (pending as case T-38/24).

INTA’s and MARQUES’ intervention

INTA and MARQUES considered the case to be important for the development of EU trade mark law and each filed a statement in intervention to support OMV (here and here).

INTA’s and MARQUES’ arguments are similar:

1. The BoA applied too high a threshold for the distinctiveness of colour combination trade marks. The reasons for not protecting single colour trade marks (limited availability, single colour not capable of communication information on the origin of the goods/services, consumers not used to inferring the commercial origin on the basis of colours) should not be applied to colour combinations.

MARQUES argued that the specific colours and their systematic arrangement posed a lesser risk to the availability of colours than single colours, which is why colour combinations have a much higher level of inherent distinctiveness. Further, colour combinations enabled much more nuanced and specific communication.

INTA argued that “the issue that there is a limited number of colours available should not be exaggerated”. Consumers can supposedly distinguish a huge range of hues. 

2. The BoA did not sufficiently consider the specific arrangement of the colours. In particular, INTA argued that (emphasis in the original)

the combination of two colours and the use of a specific arrangement introduce a multitude of possible variations which would not be present for a single colour or for a colour combination without a specific arrangement.

Further, while each individual colour may communicate environmental-friendliness, nothing would indicate that the combination creates such an association.

3. The CJEU’s and General Court’s presumption that colours are not perceived as trade marks has not been supported by evidence. The BoA did also not provide reasons why the specific colours gentian blue (RAL 5010) and yellow green (RAL 6018) as well as their arrangement lacked distinctiveness. 

 

MARQUES argued that many colours can be found in nature, which does, in MARQUES’ opinion, not render them non-distinctive.

4. The BoA did not consider the established market practise of gas station operators to use colour combinations in order to distinguish their services. To that end, OMV submitted various pictures of gas stations:

OMV’s gas stations typically look like this:

These examples were not just relevant for acquired distinctiveness but also for assessing whether consumers perceive colours as a source indicator in general. Consumers learned to distinguish the commercial origin on the basis of the colour scheme of the gas station.

Comment

Colours seem to stir up a lot of emotions, so let us sit back, look at something relaxing

and take another look at the case:

1. OMV’s trade mark faces two separate hurdles:

a. The CJEU and the General Court held that colours and colour combinations are generally not perceived as indications of origin. This applies regardless of whether the particular colours are descriptive.

Challenging this case law by arguing that it has not been supported by evidence seems difficult. The General Court and the CJEU could simply argue that it constitutes a well-known fact that consumers are not in the habit of inferring the commercial origin of goods and services based on their colours. This would shift the burden of disproving this well-known fact to OMV.

INTA and MARQUES are correct that the systematic arrangement can contribute to the required minimum degree of distinctiveness. However, INTA and MARQUES did not explain why the specific arrangement of OMV’s colours (approximate ratio of one (yellow green) to seven (gentian blue); colours placed next to each other so that they create a straight horizontal line between them) is distinctive or contributes to the overall distinctiveness of the sign.

b. Apart from this first hurdle, the BoA found the colours blue and green to be descriptive for the goods and services in question because they would be perceived as a reference to nature and environmental-friendliness of the goods and services.

The General Court confirmed the BoA’s notion of the colour green in several decisions. It will be interesting to see if the Court also confirms the perception of the colour blue. In Germany, the Federal Patent Court shared the BoA’s opinion that ‘blue is the new green’ (case 29 W (pat) 532/21).

2. If INTA’s argument that two colours and the use of a specific arrangement introduce a multitude of possible variations were true, OMV’s trade mark would not be registerable because it would breach Art. 4(b) EUTMR and the Sieckmann criteria in Art. 3(1) EUTMIR. The CJEU held in the Red Bull judgment (IPKat here) at para 47

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 the judgment of 24 June 2004, Heidelberger Bauchemie (C‑49/02, EU:C:2004:384).

3. An established market practise of gas station operators to use specific colour combinations through which consumers learned to perceive colours as indications of origin could only overcome the general objection to colour (combination) trade marks (see 1. a. above) but not the objection that the colours are descriptive (see 1. b. above). An analogy: Just because consumers are used to words as indications of origin does not mean that each and every word will be perceived as a source identifier.

This is certainly going to be an interesting decision.

The last picture is by Tahir Osman and used under the licensing terms of pexels.com.