Is a colour capable of constituting a trade mark?
In Libertel Groep BV v. Benelux Merkenbureau the ECJ considered whether a mark consisting of a single orange rectangle and described as "orange" without reference to any colour code was devoid of distinctive character within the Trade Mark Directive (the "directive").
Whether a colour is capable of constituting a trade mark depends on the following requirements:
(i) can a colour be a sign? It should not be presumed that a colour constitutes a sign but if it is used in relation to goods or services it could do so.
(ii) is a colour capable of graphic representation? The mark needs to be clear, precise, self-contained, easily accessible, intelligible, durable and objective (Sieckmann). A mere sample of a colour will not be enough as the colour may fade with time. A sample together with a verbal description may satisfy the requirement depending on the circumstances. A sample with a verbal description and reference to an internationally recognised consistent identification code is more likely to meet the requirements.
(iii) is a colour capable of distinguishing goods services Although colours possess little inherent capacity for communicating specific information this does not mean they are incapable of distinguishing.
Questions and Answers
The ECJ was considering questions posed by the Hoge Raad (High Court of the Netherlands):
When assessing distinctiveness of a specific colour, must account be taken of a general interest in availability of that colour?
The availability of colours per se for use by all is an important consideration in determining their capacity to distinguish. In reaching this decision the ECJ considered the following points:
(i) a trade mark should be viewed in the eyes of the reasonably well informed and observant average consumer (Lloyd Schuhfabrik). His/her capacity to distinguish colours is limited which limits the numbers of different colours available as trade marks;
(ii) the Directive must be read in line with the EC Treaty's objective to maintain undistorted competition;
(iii) a trade mark gives its owner a monopoly to use that mark in relation to certain goods/services;
(iv) registration of trade marks may be refused for public interest reasons, e.g. geographical names (Windsurfing Chiemsee) and functional shapes (Philips);
(v) the limited number of colours effectively available would allow one undertaking to exhaust the entire range of available colours;