Opinion of the Advocate General — ECLI:EU:C:2002:650
Date: 2002-11-12
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Netherlands

Summary of the Judgment 
1. Approximation of laws — Trade marks — Directive 89/104 — Signs capable of 
constituting a trade mark — Colour per se — Conditions 
(Council Directive 89/104, Art. 2) 
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SUMMARY — CASE C-104/01 
2. Community law — Interpretation — Directives — Statement of the Council entered 
in its minutes — Whether to be taken into consideration — Not permissible in the 
absence of any reference to it in the directive itself 
3. Approximation of laws — Trade marks — Directive 89/104 — Where registration 
of a trade mark may be refused or the trade mark declared invalid — Trade mark 
devoid of distinctive character — Possibility that a colour per se may be distinctive — 
Conditions 
(Council Directive 89/104, Art. 3(1)(b) and 3(3)) 
4. Approximation of laws — Trade marks — Directive 89/104 — Registration of a 
new trade mark — Examination of a sign by the competent authority —· Need for a 
thorough examination 
(Council Directive 89/104, Arts 2 and 3) 
5. Approximation of laws — Trade marks — Directive 89/104 — Where registration 
of a trade mark may be refused or the trade mark declared invalid — Trade mark 
devoid of distinctive character — Determination whether a colour per se has a 
distinctive character — Account taken of the public interest in not unduly restricting 
the availability of colours 
(Council Directive 89/104, Art. 3(1)(b) and 3(3)) 
6. Approximation of laws — Trade marks — Directive 89/104 — Where registration 
of a trade mark may be refused or the trade mark declared invalid — Trade mark 
devoid of distinctive character — Recognition of distinctive character of a colour per 
se — Acquisition through use 
(Council Directive 89/104, Art. 3(l)(b)) 
7. Approximation of laws — Trade marks — Directive 89/104 — Where registration 
of a trade mark may be refused or the trade mark declared invalid — Trade mark 
devoid of distinctive character •—• Recognition of distinctive character of a colour per 
se —• Conditions 
(Council Directive 89/104, Art. 3(1)(b) and 3(3)) 
8. Approximation of laws — Trade marks — Directive 89/104 — Where registration 
of a trade mark may be refused or the trade mark declared invalid — Trade mark 
devoid of distinctive character — Determination whether a colour has a distinctive 
character and the public interest in not unduly restricting the availability of colours •— 
Account taken of the number of goods or services for which registration applied for 
(Council Directive 89/104, Art. 3(l)(b) and 3(3)) 
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LIBERTEL 
9. Approximation of laws — Trade marks — Directive 89/104 — Where registration 
of a trade mark may be refused or the trade mark declared invalid — Trade mark 
devoid of distinctive character — Determination whether a trade mark has a 
distinctive character — Examination by reference to the actual situation, including 
use made of the mark 
(Council Directive 89/104, Art. 3(1 )(b) and 3(3)) 
1. A colour per se is capable of constitut­
ing a trade mark within the meaning of 
Article 2 of First Directive 89/104 
relating to trade marks provided that 
it is a sign which is capable of graphic 
representation and of distinguishing 
the goods or services of one undertak­
ing from those of other undertakings. 
(see paras 23, 42) 
2. A declaration recorded in the minutes 
of the Council on the occasion of the 
adoption of a directive cannot be used 
for the purpose of interpreting a provi­
sion of that directive where no refer­
ence is made to the content of that 
declaration in the wording of the 
provision in question and therefore 
has no legal scope. 
(see paras 25-26) 
3. A colour per se, not spatially delimited, 
may, in respect of certain goods and 
services, have a distinctive character 
within the meaning of Article 3(1 )(b) 
and (3) of First Directive 89/104 relat­
ing to trade marks, provided that, inter 
alia, it may be represented graphically 
in a way that is clear, precise, self-
contained, easily accessible, intelligible, 
durable and objective. The latter con­
dition cannot be satisfied merely by 
reproducing on paper the colour in 
question, but may be satisfied by 
designating that colour using an inter­
nationally recognised identification 
code. 
(see para. 68, operative part 1) 
4. The large number and detailed nature 
of the obstacles to registration of a 
trade mark set out in Articles 2 and 3 
of First Directive 89/104 relating to 
trade marks, and the wide range of 
remedies available in the event of 
refusal, indicate that the examination 
carried out by the competent authority 
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SUMMARY — CASE C-104/01 
at the time of the application for 
registration must not be a minimal 
one. It must be a stringent and full 
examination, in order to prevent trade 
marks from being improperly regis­
tered. 
For reasons of legal certainty and good 
administration, it is necessary to ensure 
that trade marks whose use could 
successfully be challenged before the 
courts are not registered. 
(see para. 59) 
5. In assessing the potential distinctive­
ness , w i th in the mean ing of 
Article 3(1)(b) and (3) of First Directive 
89/104 relating to trade marks, of a 
given colour as a trade mark, regard 
must be had to the general interest in 
not unduly restricting the availability 
of colours for the other traders who 
offer for sale goods or services of the 
same type as those in respect of which 
registration is sought. 
(see para. 60, operative part 2) 
6. In the case of a colour per se, distinc­
tiveness without any prior use, within 
the meaning of Article 3(1)(b) of First 
Directive 89/104 relating to trade 
marks is inconceivable save in excep­
tional circumstances. However, even if 
a colour per se does not initially have 
any such distinctive character, it may 
acquire such character in relation to 
the goods or services claimed following 
the use made of it, pursuant to 
Article 3(3) of the Directive. That 
distinctive character may be acquired, 
inter alia, after the normal process of 
familiarising the relevant public has 
taken place. 
(see paras 66-67) 
7. A colour per se may be found to 
possess distinctive character within 
the meaning of Article 3(1)(b) and (3) 
of First Directive 89/104 relating to 
trade marks, provided that, as regards 
the perception of the relevant public, 
the mark is capable of identifying the 
product or service for which regis­
tration is sought as originating from a 
particular undertaking and distinguish­
ing that product or service from those 
of other undertakings. 
(see para. 69, operative part 3) 
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LIBERTEL 
8. The fact that registration as a trade 
mark of a colour per se is sought for a 
large number of goods or services, or 
for a specific product or service or for a 
specific group of goods or services, is 
relevant, together with all the other 
circumstances of the particular case, to 
assessing both the distinctive character, 
within the meaning of Articles 3(1)(b) 
and (3) of First Directive 89/104 relat­
ing to trade marks, of the colour in 
respect of which registration is sought, 
and whether its registration would run 
counter to the general interest in not 
unduly limiting the availability of col­
ours for the other operators who offer 
for sale goods or services of the same 
type as those in respect of which regis­
tration is sought. 
(see para. 71, operative part 4) 
9. In assessing whether a trade mark has 
distinctive character within the mean­
ing of Article 3(1)(b) and (3) of First 
Directive 89/104 relating to trade 
marks, the competent authority for 
registering trade marks 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 which has been 
made of the mark. 
(see para. 77, operative part 5) 
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