A trademark combining colour and shape may be refused registration in terms of EU law and the attractiveness of the goods flowing from the reputation of the mark or its proprietor is totally irrelevant, Advocate General Szpunar has recently opined.

The EU’s legal framework regulating trademarks makes provision for two main ways to register and attain protection for a trademark.

Trademarks can either be registered at national level at the industrial property offices of EU countries, or at EU level as a ‘European Union trademark’ (EUTM) at the European Union Intellectual Property Office.

The two systems coexist and are complementary to each other. However, it is not every trademark which can be so registered. For example, if a trademark is not distinctive or is merely descriptive, it will be refused registration or declared invalid if registered.

Similarly, signs which consist exclusively of the shape which results from the nature of the goods themselves, the shape of goods which is necessary to obtain a technical result or the shape which gives substantial value to the goods cannot be registered or, if registered, will be declared invalid.

The facts of this case were briefly as follows. A fashion designer registered a trademark described as consisting “of the colour red applied to the sole of a shoe”. He registered this trademark in Benelux for ‘footwear’ in 2010 and for ‘high-heeled shoes’ in 2013. In 2012, the company Van Haren sold high-heeled women’s shoes with red soles.

The owner of the previously registered mark brought proceedings before the courts of the Netherlands alleging that Van Haren had infringed his trademark rights. Van Haren in turn claimed that the registration of the mark in question was invalid. The national court seized of the case filed a preliminary reference requesting the Court of Justice of the European Union for guidance on the matter.

In his opinion, Advocate General Szpunar affirmed that the mark in question was to be considered as one consisting of the shape of the goods and hence the relevant legal provisions relating to invalidity of registration of shapes were to be applied. The AG observed that the proprietor was seeking protection for a mark consisting of a colour in relation to a shape and not for a mark consisting of a colour in itself. This was so, since in the AG’s opinion, it was doubtful whether the colour red could perform the essential function of a trade mark, that is, that of identifying its proprietor, when such colour is used separately from the shape of the sole.

In order to ascertain whether a sign such as the one in question could be validly registered, the AG noted that a number of criteria had to be taken into consideration by any national court seeking to ascertain the validity or otherwise of a registered mark. The identification by the public of the origin of the goods on the basis of the overall impression created by a sign is of paramount importance. This factor was to be taken into consideration in all cases and irrespective of whether the mark in question was a shape, colour or position mark.

Also important to assess is whether the registration of the sign in question would unduly restrict the availability of the characteristics represented by that sign for other operators offering for sale goods or services of the same type.

Furthermore, AG Szpunar observed that any analysis regarding the validity or otherwise of a mark must relate exclusively to the intrinsic value of the shape and not take into account the attractiveness of the goods flowing from the reputation of the mark or its proprietor.

The proprietor of any mark must ensure that the mark in question satisfies the legal criteria set down by the law prior to seeking the protection of such mark through registration. Indeed, as is evident from this opinion, the registration of a mark which fails to satisfy such legal criteria will in the long run offer little solace to its proprietor since it can still be declared as invalid by any other person seeking to use the same mark on their products.

Mariosa Vella Cardona M’Jur, LL.D., is a freelance legal consultant specialising in European law, competition law, consumer law and intellectual property law.mariosa@vellacardona.com.

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