Source: EURLEX
Language: en
Format: md

Joined Cases T‑101/15 and T‑102/15

Red Bull GmbH

v

European Union Intellectual Property Office

(EU trade mark — Invalidity proceedings — EU trade mark consisting of a combination of the colours blue and silver — Absolute ground for refusal — Graphic representation that is sufficiently clear and precise — Need for a systematic arrangement associating the colours in a predetermined and uniform way — Legitimate expectations — Article 4 and Article 7(1)(a) of Regulation (EC) No 207/2009 (now Article 4 and Article 7(1)(a) of Regulation (EU) 2017/1001))

Summary — Judgment of the General Court (Second Chamber), 30 November 2017

1. EU trade mark — Definition and acquisition of the EU trade mark — Signs of which a trade mark may consist — Colours or combinations of colours — Conditions

   (Council Regulation No 207/2009, Arts 4 and 7(1)(a))
2. EU trade mark — Definition and acquisition of the EU trade mark — Signs of which a trade mark may consist — Colours or combinations of colours — Combination of the colours blue and silver

   (Council Regulation No 207/2009, Arts 4 and 7(1)(a))
3. EU trade mark — Definition and acquisition of the EU trade mark — Signs of which a trade mark may consist — Colours or combinations of colours — Condition — Definition in appropriate detail of the subject matter of the protection afforded by the mark — Breach of the principle of equal treatment — None

   (Council Regulation No 207/2009, Arts 4 and 7(1)(a))
4. EU trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — EUIPO’s previous decision-making practice — Principle of legality

   (Council Regulation No 207/2009)
5. Judicial proceedings — Introduction of new pleas during the proceedings — Conditions — Amplification of an existing plea — Lawfulness
6. EU law — Principles — Proportionality — Scope
7. EU law — Principles — Protection of legitimate expectations — Conditions — Specific assurances given by the authorities — Compliance of the assurances with the applicable rules

1. It is apparent from the case-law that, in order to constitute an EU trade mark under Article 4 of Regulation No 207/2009 on the European Union trade mark, colours or combinations of colours must satisfy three conditions. First, they must be a sign. Second, that sign must be capable of being represented graphically. Third, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.

   As the Court of Justice has already held, colours are normally a simple property of things. Even in the particular field of trade, colours and combinations of colours are generally used for their attractive or decorative powers, and do not convey any meaning. However, it is possible that colours or combinations of colours may be capable, when used in relation to a product or a service, of being a sign.

   For the purposes of the application of Article 4 of Regulation No 207/2009, it is necessary to establish that in the context in which they are used, colours or combinations of colours which it is sought to register in fact represent a sign. The purpose of that requirement is in particular to prevent the abuse of trade mark law in order to obtain an unfair competitive advantage.

   In addition, as regards the requirement that a sign be capable of being represented graphically within the meaning of Article 4 of Regulation No 207/2009, it is apparent from the case-law that that graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified.

   Further, in order to perform its function, the graphic representation within the meaning of Article 4 of Regulation No 207/2009 must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.

   Such an interpretation is necessary for the proper working of the EU trade mark registration system. The function of the requirement of graphic representation is in particular to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor. The entry of the mark in a public register has the aim of making it accessible to the competent authorities and to the public, particularly to economic operators. On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of applications for registration and the publication and maintenance of an appropriate and precise register of trade marks. On the other hand, economic operators must be able to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties.

   In those circumstances, in order to fulfil its role as a registered EU trade mark, a sign must always be perceived unambiguously, uniformly and durably, so that the function of that mark as an indication of origin is guaranteed.

   So far as concerns colour per se marks, the Court has held that a sample of a colour does not per se constitute a graphic representation within the meaning of Article 4 of Regulation No 207/2009. On the other hand, a verbal description of a colour, in so far as it was composed of words which themselves were made up of letters, did constitute a graphic representation of the colour, provided that it satisfied the conditions mentioned above.

   With regard to trade marks consisting of a combination of two or more colours per se, the Court has made clear that, in order to satisfy the conditions mentioned above, a graphic representation consisting of two or more colours, designated in the abstract and without contours, has to be systematically arranged by associating the colours concerned in a predetermined and uniform way. The mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’, does not exhibit the qualities of precision and uniformity required by Article 4 of Regulation No 207/2009. Such representations would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to repeat with certainty the experience of a purchase, any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark.

   (see paras 39-47)
2. See the text of the decision.

   (see paras 49-91)
3. The requirement that a mark consisting of a combination of two or more colours exhibit a systematic arrangement associating the colours in a predetermined and uniform way does not amount to a requirement that the actual use of a trade mark applied for be defined. However, the abstract nature of such a mark and the colours’ limited intrinsic ability to convey some precise meaning and thus to indicate the commercial origin of a product or service are such that the subject matter of the protection afforded by the mark at issue must be defined in appropriate detail. Colour per se marks thus differ from other types of mark which are, by nature, more precise and better able to convey meaning. Accordingly, in view of the nature and inherent characteristics of colour per se marks, the requirement that the subject matter of the protection afforded by such marks be defined in appropriate detail does not constitute a breach of the principle of equal treatment.

   (see para. 85)
4. See the text of the decision.

   (see paras 97-99)
5. See the text of the decision.

   (see para. 107)
6. See the text of the decision.

   (see para. 111)
7. The possibility of relying on the principle of the protection of legitimate expectations is open to any individual whom an institution, by giving him precise assurances, has led to entertain legitimate expectations. Regardless of the form in which it is communicated, precise, unconditional and consistent information which comes from an authorised and reliable source constitutes such assurance.

   However, such assurances must comply with the applicable provisions and rules, since promises which do not take account of those provisions of EU law cannot give rise to a legitimate expectation on the part of the person concerned.

   In addition, in order to be able to rely on the principle of the protection of legitimate expectations, an applicant must be able to show expectations based on specific assurances by the administration such as to give rise to pardonable confusion in the mind of a party acting in good faith and with all the diligence required of a normally informed operator.

   (see paras 125-127)

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