Request for a preliminary ruling regarding conditions for the application of a colour mark

Print this page 28-11-2017

Case C-578/17. Hartwall. Request for a preliminary ruling. Korkein hallinto-oikeus (Finland)


Trade Mark Law. “Applicant (Oy Hartwall Ab) has submitted an application to the defendant (a national patent- and registration office) for a sign as a colour mark for goods of class 32: mineral waters. In response to a provisional decision, applicant has explained that she request registration of the filed sign as a colour mark (not a figurative mark). Defendant has refused the application (by decision of 05.06.2013) based on the lack of distinctive character of the mark. [...] In the present case the referring court should decide whether or not a mark, represented in the form of a drawing in the trade mark application, can be registered as a colour mark. For a ruling in this case it is essential to know how article 2 and article 3(b) of the EU Trade Mark Regulation must be interpreted with regard to the assessment if the conditions for registration of a colour mark are fulfilled,  particularly the condition regarding the graphic representation and the distinctive character of a colour mark. Different to the judgements Libertel and Heidelberger Bauchemie, present case does not concern the registration of a mark as a colour in itself, an abstract, without shape or contours. The referring judge ascertains in the present case that, following  from the application, the trade mark application is graphically illustrated in the form of a drawing, defined by international colour codes. Furthermore applicant has emphasized that the protection of the trade mark is claimed, exactly as presented by the graphically illustrated  application and without an endless variation of the colours of the mark.

Preliminary questions:

1. For the interpretation of Article 2 of Directive 2008/95/EC of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks (Codified version) and the condition relating to the distinctive character of a trade mark within the meaning of Article 3(1)(b) thereof, is it of relevance whether the trade mark is to be registered as a figurative mark or a colour mark?


2. If the classification of the mark as a colour mark or figurative mark is of importance in the assessment of its distinctive character, is the mark, regardless of its representation as a drawing, to be registered as a colour mark in accordance with the trade mark application, or can it be registered only as a figurative mark?

3. If it is possible to register, as a colour mark, a mark represented in the form of a drawing in the trade mark application, is it necessary for the registration as a colour mark of a mark which has been graphically illustrated in the trade mark application with the accuracy required by the case-law of the Court of Justice relating to colour marks (and which is not the registration as a mark of a colour in itself, abstract, without shape or contours), is it necessary to submit in addition solid evidence of use as required by the Patentti- ja rekisterihallitus or any such evidence?”