Single-colour registration not possible, says advocate general

European Union

In Libertel Groep BV v Benelux-Merkenbureau (Case C-104/01), Advocate General Léger has issued an opinion which, if followed by the European Court of Justice (ECJ), may prevent the registration of single colours as trademarks or service marks.

In a series of previous cases, however, the Office for Harmonization in the Internal Market (OHIM) and other EU trademark registries ruled that, in certain circumstances, single colours may be registered as marks. The European Court of First Instance confirmed this approach in KWS Saat AG v OHIM, stating that single-colour Community mark registrations for services should, in most cases, be possible because services do not have any colour. If the ECJ chooses to follow the opinion of Léger in the Libertel Case, this jurisprudence will be overturned.

Libertel applied to register the colour orange as a mark in the Netherlands for telecommunications equipment and services. The application was refused on the grounds that the mark lacked distinctiveness. Libertel appealed, but the refusal was upheld. Libertel appealed again and the appellate court referred to the ECJ the question of whether, and if so in what circumstances, a single colour (reproduced as such or represented by an international colour code) is capable of distinguishing goods or services pursuant to Article 3(1)(b) of the Community Trademark Directive.

In his opinion, Léger examined Article 3(1)(a) of the directive (signs which cannot constitute a trademark), not Article 3(1)(b). He stated that a colour in itself, with no shape or outline, does not constitute a sign capable of being represented graphically or used to distinguish the products or services of one undertaking from those of another. Therefore, in Léger's view, a single colour without a shape or outline cannot constitute a mark. He backed up his conclusions by reasoning that the enforcement of single-colour registrations would be uncertain and that the relatively few colours in the spectrum should not be monopolized.

As Léger's opinion did not address the questions asked by the Dutch court, it will be interesting to see whether the ECJ follows his reasoning or uses this case to fully clarify the law on single-colour registrations.

Tom Hope, Tom Hope Solicitors, London

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