CFI: colour position mark on packaging

The European Court of Justice has recently ruled on a colour position mark in which a red area is precisely positioned. However, this colour position mark is not positioned on the claimed product, but on its packaging.

Colour position mark in red

Similar to Louboutin's famous "red sole" position mark, the contested colour position mark in the present trade mark case shows a red area at a certain point. Nevertheless, the present case and the Louboutin decision are not comparable.

The legal question, which has been waged through many instances around this famous red sole of Louboutin, was whether the application of a certain colour at a specific place on the product means that this sign consists of a shape (within the meaning of Article 3(1)(e)(iii) of Directive 2008/9). This is because a shape is not protectable as a trade mark.
The ECJ answered that the sign "red sole" did not fall under the prohibition of registration of shapes, as it did not consist exclusively of the shape within the meaning of the Trade Mark Directive) and declared Louboutin's red sole to be protectable (ECJ, 12 June 2018, Louboutin, C-163/16).

However, the colour position mark at issue in the present trademark proceedings is applied to the packaging of the goods, but not to the goods claimed.

The facts

The Board of Appeal had said that consumers do not usually infer the origin of a product from the colour of the packaging alone. The sign applied for had a primarily functional effect on the goods covered by the application, namely as a label. In addition, it could also be perceived as an ornamental element of the packaging. Overall, the sign was not suitable for indicating the commercial origin of the goods. The trademark applicant brought an action against this decision.

The goods claimed by the contested mark are machine needles as well as modules and sinkers for textile machines. The trademark applicant and plaintiff, the Groz-Beckert KG (Germany), argued before the European Court (CFI) that the Board of Appeal has not taken into account sufficiently the special features of the trademark applied for as a colour position mark. The goods covered by this mark were directed at a specialised public. According to the applicant, that public has a reason to perceive the design and positioning of the colours on the packaging as an indication of the origin of the goods inside this packing, all the more so since there are goods on the market which are, in part, imitations of the goods covered by the mark applied for.

Furthermore, the contested decision were contradictory, since the sign applied for is considered to be both decorative and functional.

Special features of a colour position mark

A trademark only has the required distinctive character if the trademark is perceived as a distinctive sign by the trade mark proprietor's business, namely for the goods or services claimed by the trademark.

A colour position mark as in the present case must also fulfil the requirements for colour marks. And, according to case law, it is generally difficult to claim inherent distinctiveness for a colour mark.

Moreover, apart from exceptional circumstances, it is settled case law of the European Court of Justice (ECJ) that colours are not inherently distinctive, but may acquire it as a result of use in relation to the goods or services for which they are applied for (see e.g. ECJ, January 2016, Enercon v OHIM, C 170/15 P, para. 31).

Is the colour position mark unusual?

The CFI explained that the Board of Appeal was right to assume that the colour position mark at issue could be perceived as a label. And it is common knowledge that labels used to mark packaging are rectangular, similar to the shape of the mark applied for, the court explained, particularly with regard to competitors in the sector.

The applicant had confirmed that the needles were generally stored by customers in such a way that the front of the packaging served to identify both the goods and the respective manufacturers. In doing so, he had also conceded the customary nature of such a sign, the CFI explained.

A sign consisting of a colour or a combination of colours as such is not necessarily perceived by the relevant public in the same way as a word or figurative mark where the sign is independent of the goods. This also applies to a specialised public with a high degree of attention, which is the case here. However, since the colour position mark at issue was not at all unusual, the Board of Appeal had rightly held that it lacked the necessary distinctive character.

The Board of Appeal's finding that the disputed mark could also be perceived as an ornamental element of the packaging was not inconsistent with a perception as a functional label. A colour could be or be perceived as both decorative and functional.

The case was dismissed in its entirety (CFI, 6 September 2023, T 277/22).

Conclusion

A trade mark application should be drafted carefully. Whether it is a figurative mark, colour mark, colour position mark or 3-D mark, different requirements apply.

It is important to know that the CTM category chosen by the applicant in his application may not be changed to another trade mark category. For example, it is not possible to suddenly re-declare a colour mark as a figurative mark in order to circumvent possible requirements for protectability.

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