Colour or figurative mark? Distinction between these two is crucial for registration

Case C-578/17. Hartwall. Reference for a prelimanry ruling. Korkein hallinto-oikeus (Finland). Opinion A-G Saugmandsgaard Øe

In this dispute between Oy Hartwall and the Finnish Intellectual Property Office, the latter refused dismissed Oy Hartwall's application for the registration of a colour mark on the ground that the mark applied for did not possess the required distinctiveness of a colour mark. In said application, the colour mark was represented graphically in a figurative form:

The Finnish Supreme Administrative Court has referred a number of questions to the Court:

1. Is it relevant if the registration of a colour trade mark is sought as a figurative mark or as a colour mark?
2. If so, if there is a discrepancy between the graphic representation of the trade mark in figurative form and the qualification as a colour mark should it be registered as colour mark or as figurative mark?

In his opinion AG Saugmandsgaard Øe states the following. Answering the question includes  an interpretation of  the requirements set out in Articles 2 and 3 of Directive 2008/95, under which all the marks must, in order to be recorded, be susceptible to graphic representation and possess distinctive character.

In order to analyse the first question, it is necessary  to answer the following two sub questions: 

1. Is the distinction between colour or figurative mark relevant for the determination of the object of the trade mark application?
   According to the AG, the distinction between colour and figurative marks is relevant because the difference between the two categories of trade marks. A colour mark protects the right to use a particular colour or colour combination as such, ie without a circumferential line, while a figurative mark the right protects to use the figurative mark  exactly as it is displayed graphically, with outline and colours  if desired.
2. And is this distinction  relevant for the determination of the distinctive character of the trade mark applied for?
   For colour marks, the specific characteristics of those types of trade marks must be taken into account, considering two aspects. In the first place, the Court ruled that colour marks have no distinctive character ab initio, because consumers are generally not accustomed to deriving the origin of goods solely from the colour or the colour of their packaging. The perception by the relevant public of a colour mark is therefore not necessarily the same as that of a word or figurative mark. In the second place, the Court ruled that there is a general interest that the availability of colours is not unjustifiably restricted for other market participants who provide goods or services of the type for which registration was sought. When assessing the distinctive character of a colour mark, it must therefore also be ensured that registration of the mark does not conflict with this general interest.

The A-G suggests that the Court should answer the first question that Article 2 and Article 3 (1) (b) and (3) of Directive 2008/95 must be interpreted as meaning that, it is relevant for the purposes of the requirement of distinctive character if the  registration of the trade mark as a figurative or as a colour mark is requested, since the specific characteristics of colour marks mean that this must be taken into account when assessing the distinctive character of a colour mark. In that regard, it must be borne in mind, first, that a colour mark rarely has ab initio distinctive character and, on the other hand, there is a general interest that the availability of colours is not unjustifiably restricted for other market participants who offer goods or services of the type for which registration has been requested.

The AG understands the second question that the referring court in essence seeks how a mark should be registered if there is a discrepancy between the graphic representation of the mark, in the form of an figure, and the choice of the trade mark category in the application, in which the brand is qualified as a colour trade mark. It is possible to represent graphically a colour mark with an outline, see Louboutin, when the graphic shows the way in which the colour mark will be applied to the goods and services. In the present case, however, the graphic representation of Oy Hartwall of the trade mark shows a ribbon and does not show the way in which the colour mark will be applied to bottles of water. This leads the A-G to conclude that the trade mark application from Oy Hartwall is contradictory, since the outline used can not even show how the colour mark will be used on the goods concerned.

The AG suggests that the Court should answer to the second question that Article 2 of Directive 2008/95 must be interpreted as that it opposes registration of a trade mark when it is not possible to determine what exactly is the object of the protection requested by the applicant, because of the existence of contradictions in the application.  This is the case, for example, with an application for registration of a trade mark as a colour mark, while the mark is represented graphically as a figurative mark.

Since the answer to the second question is in the negative, according to the A-G, answering of the third question is not necessary. Nevertheless, the AG reviews the  third question in his opinion.

Read the full opinion (in French) here.