Another single colour trademark calamity: the colour purple
Can a single colour alone be a trademark? The question is neither new nor unexplored. However, old wine in a new bottle is presented by the General Court in its decision rejecting an attempt to register a shade of colour for inhalers for asthma and related pharmaceutical preparations, reinstating the difficulty to protect a single colour as a trademark.
To little surprise, the General Court rejected an attempt to register a trademark for a single colour, this time for Glaxo Group Ltd.’s colour mark for a shade of purple (reminded of the Cadbury’s Case) for the lack of distinctive character.
The Court supported the argument that it is not in the public interest to monopolise single colours. Therefore, it rejected Glaxo’s mark on two broad grounds;
(1) lack of inherent distinctive character and
(2) insufficient evidence for acquired distinctiveness.
Devoid of Distinctive Character
The Court restated the three criteria from the Libertel Case read along with Art. 4 & 7 (1) (b) of the Regulation (EU) 2017/1001 (EUTMR). In order for a colour trademark to qualify for protection, (i) it must constitute a sign; (ii) the sign must be capable of representation and (iii) the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.
As signs are very broadly defined in EU law, a colour can constitute a sign under the first criteria. To fulfil the second requirement of representability, a reproduction of the colour and an indication of that colour by reference to a generally recognised colour code must be submitted.
As for the third criteria, for colours to be capable of distinguishing the goods or services of one undertaking from those of other undertakings, as per the Heidelberger Case, it is necessary to determine whether or not those colours or combinations of colours are capable of conveying precise information regarding the origin of a product or service. Libertel’s dictum in case of colour per se is that “…distinctive character without any prior use is inconceivable save in exceptional circumstances, and particularly where the number of goods or services for which the mark is applied for is very restricted and the relevant market very specific…”. Following this, it was reasoned in the Glaxo Group case that inhalers are commonly classified by colours indicating the type of medicinal product they contain, hence devoid of any distinctive character as per Art. 7 (1) (b) EUTMR.
In the Glaxo Group decision, the Court found that novelty and originality are not relevant criteria in the assessment of whether a mark is distinctive or not, hence the claim that the use of purple colour is unusual, unique, and adds a memorable character was considered rather irrelevant.
In cases where a mark fails to meet the requirements of inherent distinctive character, distinctiveness may have been acquired as per Article 7 (3) EUTMR. However, it is for the party that intends to rely on that provision to demonstrate that the mark in respect of which registration is sought has acquired distinctive character through use throughout the territory of the European Union, and not only in a substantial part of it.
Glaxo argued that it is sufficient that the shade of purple is recognised by the medical professionals as relating to the specific inhalers to prove acquired distinctiveness. The General Court, however, supported the Boards of Appeal contention that even if the choice of those goods was influenced or determined by intermediaries, in this case, medical professionals, the existence of distinctive character acquired through use also had to be demonstrated in respect of patients.
Further, while assessing the reliability of the results of the survey, the Court emphasised that its probative value depends on the survey method used, the geographical extent and the constituent sample population that is interviewed, the method of the interviews (including if one or more images of the shade of the colour are shown to the interviewees). In light of these considerations, the Court in the present case held that the survey submitted was not capable of demonstrating that the colour mark had acquired distinctive character through use. Some of the reasons indicated were: the survey had only been carried out in 15 Member States, the lack of information on how the participants were chosen, not constituting a representative sample, and the fact that interviewees were shown only one image representing the shade of the colour purple in question (see paragraph 98-105 of the case for detailed analysis of the survey evidence).
Finally, the Court held that the shade of purple neither had distinctive character nor acquired distinctiveness to be eligible for EU trademark protection.
The judgment once again reaffirmed that single-colour marks must meet an extremely high threshold to be protected as a trademark. A single colour will not be found inherently distinctive, save in exceptional circumstances. This means that evidence of acquired distinctiveness will almost always be required. The value and reliability of such evidence will then be a pivotal aspect in deciding the fate of the single colour mark. From the Glaxo decision, we see that the reliability of evidence collected is very important. It should reflect a representative sample population in a large number of Member States, who are presented with different shades of the colour to determine an association with the undertaking.
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Recently, the General Court in the HELL coffee case has confirmed that a descriptive foreign language term (German word HELL) can be granted protection under EU trade mark law (Hell Energy v. EUIPO, T-323/20).