ECJ confirms Libertel principles for colour combinations

In a preliminary ruling in a case referred by the German Federal Patents Court, the European Court of Justice (ECJ) has confirmed that the principles established in the Libertel Case with regards to the registration of a single colour as a trademark also apply to colour combinations.

In Libertel, the ECJ ruled that a colour per se is capable of constituting a trademark provided that it meets the following criteria:

• The colour is a sign. Although a colour per se cannot be presumed to constitute a sign, it may constitute one depending on the context in which the colour is used.
  
  
• The sign is capable of graphical representation. A mere sample of the colour is not sufficient as it does not possess the durability required by Article 2 of the Community Trademark Directive. The designation of a colour using an internationally recognized identification code may be considered to constitute a graphic representation.
  
  
• The sign is capable of distinguishing the goods or services of one undertaking from those of other undertakings.

In respect of the assessment of the potential distinctiveness of a given colour as a trademark, the ECJ held that regard must be had to the general interest in not unduly restricting the availability of colours for other traders who offer for sale goods or services of the same type as those in respect of which registration is sought.

Finally, in assessing whether a trademark has distinctive character, the competent authority for registering trademarks must carry out an examination by reference to the actual situation, taking account of all the circumstances of the case and in particular any use that has been made of the mark (see The future of colour registration is orange).

In the case at hand, Heidelberger Bauchemie GmbH applied to register in Germany a particular blue and yellow colour combination as a trademark for a range of goods relating to building construction. The German Federal Patents Court referred the case to the ECJ for a preliminary ruling as to whether a colour or combination of colours per se is a sign that is (i) sufficiently distinctive to indicate origin, and (ii) capable of being represented graphically.

The ECJ confirmed the principles established in Libertel. It ruled that a colour per se or a combination of colours may constitute a trademark as long as, in the context where it is used, (i) the colour or the combination of colours is effectively presented as a sign, and (ii) the application for the trademark provides a systematic structure representing the colour(s) in a predetermined and constant way.

The ECJ did not follow Advocate General Léger’s opinion on the issue. Léger had held that colour combinations are not registrable as trademarks (see ECJ urged to overturn Libertel).

Cristina Bercial-Chaumier, Bureau DA Casalonga-Josse, Alicante