Intellectual property, like real property, is a tangible asset that can be owned, sold or transferred. The creation, exploitation and protection of intellectual property rights are fundamental to successful businesses and can be a key component that adds value to a business and helps it to maximise its competitive position in its relevant market.
In a recent bid to drive competitive advantage, the energy drink giant, Red Bull, attempted to register their infamous blue and silver colours as a trade mark. Red Bull is no strangers to the trade mark Courts in the UK and worldwide having brought numerous claims with varying success. However, on this occasion, their application was rejected by the EU General Court.
This case was extremely technical and it has sparked much discussion amongst IP practitioners. John Tunnard, Solicitor at Taylor & Emmet explains it all:
The Courts ruled that a trademark consisting of the “mere juxtaposition” of two colours, without a “systematic arrangement”, is not sufficiently precise and uniform to be valid.
Red Bull’s first application included a description stating that “the ratio of the colours is approximately 50%-50%”, while the second said “the two colours will be applied in equal proportion and juxtaposed to each other”, like so:
The General Court backed decisions from the Cancellation Division and the First Board of Appeal at the European Union Intellectual Property Office that said the marks were devoid of distinctive character and comprised the “mere juxtaposition of two or more colours designated in the abstract and without contours”.
According to the court, the Board of Appeal was right to find that the graphical representation of the Red Bull marks “allowed several different combinations of the two colours” and that the accompanying descriptions “did not provide additional precision with regard to the systematic arrangement associating the colours in a predetermined and uniform way”.
The decision in this case is likely to make it more difficult to register colour combination trademarks and there will probably be debate around the type of description that will be sufficient to provide enough clarity and precision.
Unfortunately, whilst the Court’s decision confirmed Red Bull fell short of providing the necessary level of precision, this case does not offer brand owners much help if they wish to register a colour combination as a trademark in the future.
For applications made after 1st October 2017, signs must be represented in any appropriate form of generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. This could in fact assist brand owners apply to protect colour marks, where distinctive of the proprietor, by enabling them to submit a reproduction of the colour, other colour reference code and a description of the systematic arrangement of the colour, if the combination of colours is without contours.
If your brand only has an EU trade mark registration, then to ensure protection of your brand in the UK, it may be worthwhile filing for a UK trade mark now at the Intellectual property Office. It is currently unknown whether EU trade marks will be converted into UK trade marks following Theresa May’s triggering of Article 50.
At Taylor & Emmet we have an expert team of commercial lawyers who have a wealth of experience in advising media and technology businesses liberate, protect, and commercialise their intellectual property. If you’re a brand owner or manufacturer requiring legal assistance in protecting your intellectual property, please get in touch with us on 0114 218 4000.