Date : August 13, 2019
Ever since this Australian energy drink, hit the market in 1987, people everywhere, consumers or non-consumers could instantly relate it to a tall and slim blue-silver can. Recently, after a series of unsuccessful appeals, the CJEU finally, in the case of Red Bull GmbH v. EUIPO upheld the EU General Court's decision and stated that this abstract color combination is not eligible for a trade mark.
BACKGROUND OF THE CASE
Red bull successfully got two of its trade mark registered under class 32 of the Nice Classification[i]; one in 2002 and the other in 2010 for the color combination blue-silver. To, show that this trade mark aided in the distinctive character acquired by the energy drink, it submitted descriptions stating- "Protection is claimed for the colors blue (RAL 5002) and silver (RAL 9006). The ratio of the colors is approximately 50%–50%." (About the first mark registered in 2002) and "The two colors will be applied in equal proportion and juxtaposed to each other, Blue (Pantone 2747C), silver (Pantone 877C)." (Concerning the second mark registered in 2010).[ii]
It was only in 2013, that the court's doors were knocked by a Polish Company, Optimum Mark, stating that both the trade marks of Red Bull are invalid. It contended that the first mark should be declared invalid as it failed to meet the requirements under Article 7(1)(a) Regulation 2017/1001 (EUTMR)[iii] since its graphic representation did not systematically arrange the colors by associating them in a predetermined and uniform way. Further, the description as per which the ratio of color was ‘approximately 50%–50%', allowed for numerous combinations, with the result that consumers would not be able to make further purchases with certainty. As for the second mark in addition to the ground raised above of failing to meet the requirements under Article 7(1)(a) EUTMR, the word ‘juxtaposed' was contended to have myriad meanings and the description of the trade mark did not indicate the type of arrangement in which the two colors would be applied to the goods and was therefore not self-contained, clear and precise.[iv]
Before approaching the CJEU, the case passed through numerous doors, starting with the EUIPO Cancellation division, which declared both the marks to be invalid as they were not sufficiently represented in a clear and precise manner. Later the decision was appealed before the First Board of Appeal of EUIPO which decided to dismiss the appeals completely. And finally, before reaching CJEU, it was appealed before the EU General Court, which upheld the decision given by the Cancellation Division.[v]
THE CASE BEFORE CJEU
The appeal by the Red Bull before the CJEU was based on five grounds-
Both the parties argued on all the five grounds, after which the CJEU recorded its findings on each of them individually; however, it is the second ground of appeal which formed the cornerstone of the judgment, wherein Red Bull stated that the General Court has erred in interpreting the case of Heidelberger Bauchemie (C‑49/02)[vii] by holding that marks which contain an abstract combination of colors should in specific state the spatial arrangement of the colors in question, and thus concluded that the graphic representation of the mark of red bull in the present case was not precise and properly represented. According to red bull, the above-mentioned judgment should have been interpreted in the context of circumstances of that case only and should have not been applied here.
The CJEU held that based on precedents and the case interpreted by the General Court, it is clear that the registration of a mark which allows for a plurality of reproductions that are neither determined in advance nor uniform, is incompatible with Article 4 of Regulation No 207/2009. Though the marks in the present case were distinctive they failed to meet the criteria of Article 4 of Regulation No 207/22009, and thus the General Court did not err in rejecting this ground of appeal.
As for the first ground the court held that the General Court has infringed neither the principle of proportionality nor the principle of equal treatment. The fourth ground of appeal was rejected on the ground of it being admissible as a new plea, as a plea raised for the first time in an appeal before this Court must be rejected as inadmissible. Further, since the first four ground of appeal was rejected, the last ground did not stand before the court based on the observation in the case of Internationaler Hilfsfonds v. Commission, C‑554/11[viii] wherein it was held that "Where all the other grounds of an appeal have been rejected, any form of order sought concerning the alleged unlawfulness of the General Court's decision on costs must be rejected as inadmissible pursuant to that provision"
The CJEU by upholding the decision of the General Court has clarified for once and all that in cases concerning trade mark of abstract color combinations, merely showing distinctiveness added by it to the product is not enough, as these marks can result in numerous combination of colors and create confusion for customers. This judgment is a turning point for such cases as it not only clarified, that till the time a color mark can be subjected to myriad formations and interpretations which are neither predetermined nor static in all situations it would not be compatible with the EUTMR but also took away the rights of red bull to file a trade mark infringement suit for these marks. It can, however, still resort to the passing off remedy under common law.
 Red Bull GmbH v. EUIPO ECLI:EU:C:2019:641 Para 20.
 Red Bull GmbH v. EUIPO ECLI:EU:C:2019:641 Para 30. http://curia.europa.eu/juris/document/document.jsf?text=&docid=216554&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=4908078
Heidelberger Bauchemie (C‑49/02)
 Internationaler Hilfsfonds v. Commission, C‑554/11, EU:C:2012:629, paragraphs 38 and 39