General Court confirms colour combinations require more than systematic arrangement for registration

What has happened?

The General Court has dismissed OMV AG's challenge to the EUIPO's refusal to register this blue and green colour combination mark for fuel-related goods and services:

The EUIPO refused the application for lack of distinctiveness for the goods and services applied for as it was considered to be simply a "a systematic arrangement of two colours". 

Want to know more?

Background and appeal

On 27 January 2021, OMV filed an international registration designating the EU for a mark consisting of the colours gentian blue (RAL 5010) and yellow green (RAL 6018). It was refused protection firstly by the EUIPO and subsequently by the Board of Appeal on the grounds of lack of distinctiveness. 

OMV appealed, arguing that the previous decisions had not provided sufficient reasoning for reaching the conclusion and that the mark is not sufficiently distinctive for registration.

Despite interventions by Marques and INTA supporting the application, the General Court confirmed that the colour combination mark lacked inherent distinctive character.

The General Court's ruling

The Board of Appeal was correct to consider the Libertel case principles even though that judgment concerned single colour marks. The General Court confirmed that the Board of Appeal properly referenced additional relevant case law on colour combinations, particularly Heidelberger Bauchemie, alongside Libertel.

While the EUIPO Guidelines state that a refusal of a colour combination mark can only be based on specific facts or arguments (see EUIPO Guidelines), the General Court emphasised that the Guidelines are not binding legal acts for interpreting EU law provisions. In any event, it would seem that the decision to refuse this particular application is not out of synch with the Guidelines.

The General Court confirmed that "the fact that a sign for which registration as an EU trade mark is sought consists of a combination of colours used in a precise systematic arrangement associating those colours in a predetermined and uniform way is not sufficient to allow it to be registered as an EU trade mark". The mark must still satisfy all conditions under Article 7 of Regulation 2017/1001, particularly the ability to distinguish goods/services as originating from a particular undertaking.

The General Court found that the evidence filed by OMV, including market studies from 2022-2023, was insufficient to demonstrate distinctiveness and were conducted after the application date.

The General Court found nothing wrong with the Board of Appeal's distinctiveness analysis. The Board of Appeal correctly considered that blue and green colours were commonly used in the filling station market (one of the specific facts cited in the EUIPO Guidelines), and that the specific tones and arrangement did not enable the relevant public to perceive the mark as indicating commercial origin. The environmental connotations of the colours (ecology, environmental protection) were properly considered in assessing consumer perception.

What this means for you?

Brand owners need to be aware that colour combination marks face similar stringent distinctiveness requirements as single colour marks. Systematic arrangement provides no presumption of registrability. Depending on the number and arrangement of the colours, applicants often have to demonstrate acquired distinctiveness through use at the filing date. The decision also clarifies that – to the extent that they do – the EUIPO Guidelines cannot override established case law principles.