ECJ urged to overturn Libertel

European Union

In the case of Heidelberger Bauchemie GmbH, Advocate General Léger has issued an opinion stating that colour combinations are not registrable as trademarks. The opinion seems to contradict the European Court of Justice's (ECJ) decision in the Libertel Case, in which it held that a single colour can, in principle, be registered as a trademark (see The future of colour registration is orange).

Heidelberger Bauchemie GmbH, which sells products under the brand name Deitermann, applied to register in Germany a particular blue and yellow colour combination as a trademark for a range of different goods all relating to building construction. The RAL (Reichs-Ausschuss für Lieferbedingungen) codes of the specific shades of blue and yellow were indicated in the application.

Notwithstanding the ECJ's decision in Libertel, the Thirty-third Division of the German Federal Patents Court referred a question on the registrability of colours as trademarks to the ECJ for a preliminary ruling. It asked 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.

In his opinion, Léger reasoned that a combination of colours per se can have distinctiveness only if seen "within the framework of a certain arrangement". However, depending on the allocation and the proportions of the colours, the number of possible arrangements would be infinite and the overall impression of each of these possible combinations could differ considerably. Therefore, in his opinion a combination of colours per se cannot fulfil the function of indicating the origin of goods or services. Léger added that a colour cannot acquire distinctive character as a result of the relevant public becoming familiar with this colour and identifying it with certain products originating from a particular undertaking.

Léger also stated that a combination of colours is not capable of being represented by an identification code (eg, the RAL code), as the identification code would not enable trademark offices or third parties to identify the overall impression of a trademark consisting solely of a combination of colours. He opined that a combination of colours per se cannot be presumed to constitute a trademark as its meaning would depend on the context in which the colours are used.

Léger's opinion appears to contradict the ECJ's ruling in Libertel. Indeed, he concluded by suggesting that the ECJ should reconsider its ruling in that case and indicate to the German Federal Patents Court that colours or combinations of colours do not have distinctive character and are not capable of graphic representation.

However, it is expected that, as in the Libertel Case, the ECJ will again reject Léger's opinion. It is likely to adhere to the principles it set out in that decision relating to single colours and apply them to colour combinations as well.

For a discussion of Léger's opinion in the Libertel Case see Single-colour registration not possible, says advocate general.

Matthias Sonntag, Gleiss Lutz, Stuttgart

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