[author: Christine Stoeber]

The colour of a product plays an important role in identifying its commercial origin. For this reason, seeking protection for abstract colour marks is a very valuable asset in trade. An example of this type of mark and its use is the colour combination Green / Yellow by John Deere as seen here:

The European Court of Justice (CJEU) ruled in its famous Libertel judgment (C-104/01), that a colour mark can function as a badge of origin and may distinguish goods of one undertaking from those of other undertakings. However, a hurdle that colour marks must fulfil is meeting the registration requirements of Article 7 EUTMR. Amongst others, this provision provides for absolute grounds of refusal if:

• The sign exclusively consists of the shape which results from the nature of the goods themselves (Article 7(1)(e)(i) EUTMR) and
• The sign is not distinctive (Article 7(1)(b) EUTMR).

With the first requirement in mind, the Advocate General issued an opinion on 22 June in the Louboutin case (C-163/16) which was reopened last month. He commented on abstract colour marks and whether or not they consist of the shape which results from the nature of the goods. The Advocate General came to the conclusion that abstract colours do not exclusively consist of the shape of the goods.

The Advocate General’s view is also in line with the definition of abstract colour marks in the Implementing Regulation. A colour mark is defined as a “sign consisting exclusively of a single colour / a combination of colours without contours“. As such, the graphic representation of an abstract colour mark does not contain any contours, let alone a shape. Therefore, it would amount to a contradiction in terms for a contourless mark to consist of a shape.

The good news is that the EUIPO has not issued a decision in which it declared an abstract colour mark invalid or rejected it on the basis of Article 7(1)(e) EUTMR in line with the Advocate General’s opinion and the above definition of an abstract colour mark. This is particularly welcome as a refusal based on Article 7(1)(e) EUTMR cannot be overcome by acquired distinctiveness in the sense of Article 7(3) EUTMR.

However, the EUIPO practice also shows that it has become more and more difficult to register abstract colour marks. An abstract colour mark is inherently distinctive if the two requirements laid down in Libertel (, para. 66 and 67) are fulfilled:

• the number of goods or services for which the mark is claimed is very restricted and
• the relevant market is very specific.

If the Applicant cannot show that these conditions are fulfilled, it would need to rely on acquired distinctiveness to obtain trade mark protection. The threshold for showing acquired distinctiveness is very high. The territory for which acquired distinctiveness has to be proven is the entire European Union because lack of inherent distinctiveness applies to each member state (Article 7(2) EUTMR). In addition to this, acquired distinctiveness requires recognition of the colour mark as a badge of origin on the part of the relevant public and the most direct means to prove such recognition is through a market survey. However, conducting market surveys for the entire European Union is a very cost-intensive undertaking so a more cost effective approach is to conduct surveys in specific member states and extrapolate the results to member states in which the market conditions are comparable.

Take away:

Article 7(1)(e) EUTMR bars from registration a “shape which results from the nature of the goods” which means that, as they are contourless, abstract colour marks should not fall foul of this Article.

In addition to this, when registering abstract colour marks, it is important to bear in mind the importance of acquired distinctiveness (Article 7(3) EUTMR) and to consider market surveys as described to prove recognition.