Filing a color per se as a trademark : Judgment C-104/01 of the CJEC

26.07.2003

On 6 May 2003, the Court of Justice of the European Communities (CJEC) gives a Judgment (C-104/01) on the validity of a mark composed by a color per se.



On 6 May 2003, the Court of Justice of the European Communities (CJEC) gives a Judgment (C-104/01) on the validity of a mark composed by a color per se.Indeed, the Article 2 of the Directive 89/104/CEE enable to register as a trade mark any sign "capable of being represented graphically [...] provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."Considering a trade mark consisting in one colour, the question was if a color is capable of distinguishing goods or services.The CJEC also put into question the graphical representation of the colour. Indeed, the lone indication of a color "orange" or the representation of a sample on a media, including, will not always be a indication allowing to identify the trade mark... ", criteria determined by the CJEC in the judgment C-273/00.On this point, the CJEC concludes:" 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 Article 3(3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating 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 condition cannot be satisfied merely by reproducing on paper the colour in question, but may be satisfied by designating that colour using an internationally recognised identification code. "Then, the CJEC studies the distinctive character of a color per se. According to the Court, quoting its judgment C-299/99 concerning tri-dimensional trade marks, it must be examined if it exists a general interest justifying the sign would remain available for all. On this point, the Court remarks that for goods destinated to the whole consumers, the number of different colours the public is capable to distinguish is to be considered as small. Thus "the greater the number of the goods or services for which the trade mark is sought to be registered, the more excessive the exclusive right which it may confer is likely to be, and, for that very reason, the more likely is that right to come into conflict with the maintenance of a system of undistorted competition, and with the public interest in not unduly restricting the availability of colours for the other traders who market goods or services of the same type as those in respect of which registration is sought."The Court states on this point:" In assessing the potential distinctiveness 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. " Concerning the distinctive character of a trade mark, the Court remembers that "the essential function of a trade mark is to guarantee the identity of the origin of the marked goods or service to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin".According to the Court, in current commercial practice, a colour per se is not used as a means of identification. However, a colour may acquire a distinctive character in relation to the goods or services claimed, following the use made of it, pursuant to Article 3(3) of the Directive.The Court concludes:" A colour per se may be found to possess distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of Directive 89/104, provided that, as regards the perception of the relevant public, the mark is capable of identifying the product or service for which registration is sought as originating from a particular undertaking and distinguishing that product or service from those of other undertakings. " The distinctive character of a mark being related to goods or services designated, the Court also states :" 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 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 colours for the other operators who offer for sale goods or services of the same type as those in respect of which registration is sought. "Finally, the Court remembers that the disposisions of the Directive must be compatible with those of the Paris Convention, which states "in determining whether a mark is eligible for protection, all the factual circumstances must be taken into consideration, particularly the length of time the mark has been in use" (Article 6 quinquies C(1) of the Paris Convention). Consequently, " in assessing whether a trade mark has distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of Directive 89/104, 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. "