For many years, traders have used colours or combinations of colours to distinguish their goods and services from those of other traders but European Union trade mark registries and courts have struggled to define the circumstances in which colours will be allowed registration as trade marks. The ECJ’s 2003 decision in Libertel answered many of the issues in relation to single colour marks per se, confirming that such marks are registerable in limited circumstances. However the ECJ’s recent decision in Heidelberger Bauchemie GmbH has significantly raised the hurdle for registration of colours per se meaning that many existing registrations may not be valid. In this case German company Heidelberger applied to the German Patent Office for trade mark registration of the colours blue and yellow: the applicant’s corporate colours were used “in every conceivable form, in particular on packaging and labels”. The German Patent Office rejected the application on the grounds of lack of distinctive character. Heidelberger appealed to the Bundespatentgericht, which referred two questions to the ECJ, asking, in short, whether combinations of colours per se are registerable as trade marks, and, if so, in what circumstances. The ECJ started with a three-step test for registerability for combinations of colours:

1. the combination of colours per se must be a sign;
2. the sign must be capable of being represented graphically; and
3. the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings

The first two issues had been dealt with by the ECJ in Libertel and its 2002 decision on smell trade marks, Sieckmann.Sieckmann held that the graphical representation of a trade mark be “precise and durable” in order to enable other traders to know the extent of the registrant’s rights. In Heidelberger the ECJ held that a graphic representation consisting of two or more colours “must be systematically arranged by associating the colours concerned in a predetermined and uniform way”. Specifically, the ECJ rejected Heidelberger’s claim to use blue and yellow “in every conceivable form”: this would not provide the “precision and uniformity” required by other traders. In relation to the third test, the ECJ again relied on Libertel, holding that “save in exceptional cases, colours do not initially have a distinctive character, but may be capable of acquiring such character as the result of the use made of them in relation to the goods or services claimed”. In short, the ECJ required that applications for registration of a combination of colours per se be backed up by proof of acquired distinctiveness. This is the same position as the United States.

In the United Kingdom a Court of Appeal decision made front page news after Nestlé applied to register the shape of thePolo mint as a trade mark. The case makes a practical point of general relevance, however, for manufacturers of products having a memorable shape or appearance which have become well-known to the public. Nestlé applied to register the shape of its well-known Polo mint in relation to “sugar confectionery” and, as is fairly usual in such cases, the Registry objected that the shape was nondistinctive, obliging Nestlé to prove that consumers had come to recognise it as the company’s trade mark. Nestlé was able to show the required degree of use of the shape, but limited to the colour white and the specific dimensions of the POLO mint, and even then only in relation to the narrower specification of goods “mint-flavoured compressed confectionery”. Whilst the nestle application failed on a technicality the case the case illustrates the difficulty of obtaining registration for the shape of goods as a trade mark. An arbitrary shape mark is not treated in the same way as an arbitrary word mark, because the Registry takes the view that a shape is less likely than a word to be seen as conveying a message of trade origin. Even where a shape has become distinctive through long use, evidence of distinctiveness should be carefully assessed and the application framed accordingly, to avoid problems of this nature.



ECJ Blues (and Yellows): A Recent Decision on Combinations of Colours per se. Article by David Stone and Nicholas Bolter, 9 February 2005
The Trade Mark Application With a Hole: The Shape of the Polo Mint. Article by David Crane et al, 3 February 2005