Orange loses orange square mark

By judgment of December 2 2013, the Spanish Supreme Court has confirmed the cancellation of International Registration No 908.137, owned by Orange Personal Communications Services Limited for goods and services in Classes 9, 38 and 42 of the Nice Classification. The mark consisted of an orange square (Pantone 151), as reproduced below: 

The background of the case is as follows.

On June 21 2006 Orange applied to the World Intellectual Property Organisation for the registration of an international figurative mark (No 908.137) designating Spain, as well as other countries. The application claimed priority from a French trademark (No 05 3 399 099) consisting of an identical sign, owned by Orange.

Jazz Telecom filed an opposition against the registration of the mark in Spain based on Article 5(1)(b) of the Spanish Trademark Law (lack of distinctiveness).

Although the application was initially refused, the Spanish Patent and Trademark Office proceeded to register the mark following an administrative appeal, considering that the sign at issue was capable of distinguishing the goods and services of Orange from those of others. Therefore, the mark did not fall under the provision relied on by Jazz Telecom.  

In upholding Orange’s appeal, the Patent and Trademark Office noted that, since the shapes or figures are not limited, a colour within a square may be appropriate to distinguish the products and services of one company from those of others. It emphasised that the exclusive right is granted for the mark as a whole - as it was applied for and published - and not for each of the individual elements that make up the mark.

Jazz Telecom appealed to the High Court of Justice of Madrid. By judgment of June 14 2012, the court found that the mark at issue lacked distinctiveness and ordered its cancellation.

Orange appealed ​​to the Supreme Court.

On December 2 2013 the Supreme Court dismissed Orange’s appeal. In accordance with the findings of the High Court of Justice, the Supreme Court held as follows:

1. Where a sign consists of a shape associated with a colour - in which the shape is banal, trivial or an elementary geometrical figure, so that, in the sign as a whole, it is the visual impression of the colour that is dominant, rather than the geometrical contour - the lack of distinctiveness of the colour per se (which, in principle, cannot be monopolised by a trader to distinguish its products and services) extends to signs that are submitted to be registered in this way.
2. The orange colour that the applicant sought to register for its products was a common colour on the market. This colour should be available to use by all traders.
3. Although it is possible to register a colour as a trademark in exceptional cases (ie, distinctiveness acquired through use in the country where protection is sought), the market research undertaken by Orange ​​in 2008 was not conclusive in showing that its mark had acquired distinctiveness through use in Spain prior to the date of application.  
4. The fact that an identical orange square had been registered by Orange in other countries did not necessarily mean that it should also be registered in Spain; it was possible that the decisions of the relevant authorities of those countries were based on the distinctiveness that the mark had acquired as a result of its use in each respective country.

Based on these considerations, the Supreme Court concluded that:

• the mark at issue lacked inherent distinctiveness; and
• it had not been proven that it had acquired distinctiveness through use in Spain before the date of application.

As a result, the Supreme Court dismissed Orange’s appeal and confirmed the judgment of the High Court of Justice of Madrid.

Antonia Torrente, Grau & Angulo, Barcelona