Colours may constitute Community marks, rules EU court

Although dismissing an appeal from a decision of the First Board of Appeal of the Office for Harmonization in the Internal Market upholding the refusal by an examiner to register a mark, the Court of First Instance of the European Communities has held that colours or colour combinations are capable of constituting Community trademarks insofar as they are capable of distinguishing the goods or services of one undertaking from those of another.

The facts in Viking-Umwelttechnik GmbH v Office for Harmonization in the Internal Market were as follows. Viking had applied to register as a Community trademark a colour combination consisting of a green rectangle juxtaposed to a grey rectangle. The application covered Class 7 gardening equipment. The application was initially refused by the examiner on the grounds that the green and grey combination was (i) devoid of any distinctive character, and (ii) was not descriptive of the goods in question within the meaning of Article 7(1)(b) of the Community Trademark Regulation.

Viking appealed, arguing that colours are in principle eligible for protection under the definition of 'signs' in Article 4 of the Community Trademark Regulation.

The Court of First Instance found that under Article 4, colours or colour combinations are capable of constituting Community trademarks insofar as they are capable of distinguishing the goods or services of one undertaking from those of another. Article 4 provides that:

"a Community trademark may consist of any signs capable of being represented graphically [...] provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."

Nevertheless, the court dismissed the appeal on the grounds that the mark in question was devoid of distinctive character under Article 7(1)(b). The court reasoned that the colours grey and green are often used together for gardening products.

Trademark applicants should bear in mind that colours must have the effect of enabling the public to distinguish the applicant's products from those of its competitors.

Claire Foggo, Ashurst Morris Crisp, London