Libertel Groep BV v. Benelux-Merkenbureau

Libertel Groep BV v. Benelux-Merkenbureau

Case No. C-104/01, European Court of Justice, 6^th May, 2003

The Applicant had applied for registration of the Colour Orange for telecommunications goods and services before Benelux Trade Marks Office (BTMO). The application form contained an orange rectangle and in the space for describing the trade mark, the word ‘orange’ was mentioned without reference to colour code.

The BTMO provisionally refused the trade mark registration and observed that unless the Applicant demonstrates that the mark has acquired a distinctive character. The Applicant approached the Regional Court of Appeal, Hague, Netherlands which was dismissed. The Applicant appealed to the Supreme Court of Netherlands. The Supreme Court of Netherlands prepared the following questions for opinion of the Europan Court of Justice.

1. Is it possible for a single specific colour which is represented as such or is designated by an internationally applied code to acquire a distinctive character for certain goods or services within the meaning of Article 3(1)(b) of the Directive?
2. If the answer to the first question is in the affirmative:

(a) In what circumstances may it be accepted that a single specific colour possesses a distinctive character in the sense used above?

(b) Does it make any difference if registration is sought for a large number of goods and/or services, rather than for a specific product or service, or category of goods or services respectively?

3. In the assessment of the distinctive character of a specific colour as a trade mark, must account be taken of whether, with regard to that colour, there is a general interest in availability, such as can exist in respect of signs which denote a geographical origin?
4. When considering the question whether a sign, for which registration as a trade mark is sought, possesses the distinctive character referred to in Article 3(1 )(b) of the Directive, must the Benelux Trade Mark Office confine itself to an assessment in abstracto of distinctive character or must it take account of all the actual facts of the case, including the use made of the sign and the manner in which the sign is used?

The European Court of Justice as preliminary considerations observed:

• Colour must satisfy three conditions: i) it must be a sign; ii) that sign must be capable of graphic representation; and iii), the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.
• A colour per se is capable, in relation to a product or service, of constituting a sign.
• The graphic representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
• A mere sample of colour does not satisfy the said requirements set out above.
• A colour sample may deteriorate over time. In cases of media, including paper, where it would deteriorate, filing of sample of colour does not possess durability.
• A sample of a colour, combined with a description in words of that colour, may constitute a graphic representation provided that the description is clear, precise, self-contained, easily accessible, intelligible, and objective.
• The designation of Colour using an internationally recognised identification code may be considered to constitute a graphic representation as such codes are deemed to be precise and stable.
• Where a sample of a colour, together with a description in words, does not satisfy the conditions for a graphical representation. That deficiency may, depending on the facts, be remedied by adding a colour designation from an internationally recognised identification code.
• The question whether a colour per se is capable of distinguishing the goods or services of one undertaking from those of other undertakings, is dependent upon whether or not colours per se are capable of conveying specific information, in particular as to the origin of a product or service.
• In that connection, it must be borne in mind that, whilst colours are capable of conveying certain associations of ideas, and of arousing feelings, they possess little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message.
• However, that factual finding would not justify the conclusion that colours per se cannot, as a matter of principle, be considered to be capable of distinguishing the goods or services of one undertaking from those of other undertakings. The possibility that a colour per se may in some circumstances serve as a badge of origin of the goods or services of an undertaking cannot be ruled out. It must therefore be accepted that colours per se may be capable of distinguishing the goods or services of one undertaking from those of other undertakings.
• It follows from the foregoing that, where the conditions described above apply, a colour per se is capable of constituting a trade mark.

The ECJ chose to decide the third question first and held that the reply to the third question referred must be that, 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.

Then ECJ answered the first question and (a) part of second question.  The ECJ held that

The reply to the first question referred must therefore be that a colour per se, not spatially delimited, may, in respect of certain goods and services, have a distinctive character, provided that, inter alia, it may be represented graphically. 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.

The reply to Question 2(a) must be that a colour per se may be found to possess distinctive character  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.

Question 2 (b) was answered by stating that 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.

The fourth question was answered  by stating in assessing whether a trade mark has distinctive character 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.

Thus, as per this decision of the European Court of Justice, it can be gathered that a mere sample of colour is not registrable and it is to be accompanied by a description in words. If still the said representation and description together fail to satisfy graphical representation requirement, the same can be fulfilled by relying upon Internationally recognised colour identification code. These requirements fulfill the ‘graphical representation’ test. However, the sign would still have to perform function of a trade mark for which it has to be distinctive. Due to the nature of colour marks and their perception amongst the relevant public, it has been stated that a colour mark can only be registrable on evidence of use. Therefore, a colour mark has to be in use prior to the date of application for the purpose of registration.