Distinctive character and the relevant public: the registrability of a colour trademark for the General Court of the European Union

On the subject of “non-conventional” EU trademarks, the General Court of the European Union recently ruled on the assessment of the distinctiveness of a specific colour in order to be registered as a trademark (Case T-168/21, Magnetec v. EUIPO).

This is the background to the case: Magnetec GmbH initially filed trademark application No. 018022608 before the EUIPO for the colour “Light Blue” (RAL 5012), in Classes 6 (“alloys”, “metals”, “magnetic materials”), 9 (“magnetic cores”, “inductive components”, “cables for motor and electric conductors”) and 17 (“insulating sleeves for wrapping electric cables”).

The Office's examiner rejected this application on the basis of Article 7(1)(b) EUTMR for lack of distinctiveness, pointing out that “in the case of a colour per se, distinctiveness without any prior use is inconceivable save in exceptional circumstances, and particularly where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific” (Case C-104/01, Libertel Groep BV v. Benelux-Merkenbureau), which was criteria allegedly not present in this case.

Magnetec appealed against the decision, with a simultaneous request to limit the list of goods and services of its trademark application. However, the Board of Appeal rejected this request, finding it inadmissible due to its lack of clarity and adding that the colour could not in any event have any distinctive character in respect of the claimed goods.

Magnetec therefore brought an action under Article 263 TFEU against the decision of the Board of Appeal before the General Court of the European Union, seeking its annulment.

The General Court, in its judgment of 5 October 2022, decided to annul the decision, finding i) that Magnetec's request for limitation should be considered admissible, and ii) that the mark was sufficiently distinctive for the goods claimed, particularly when considering the specialised public to which they were targeted.

On the first point, the Court stated that a limitation of goods or services cannot be accepted if it leads to legal uncertainty as to the scope of protection of the mark, but clarified that specifying the intended purpose of a product or service may be relevant for assessing the admissibility of the limitation itself.

Such specification is exactly what happened in the present case: Magnetec amended its application by replacing, where necessary, the term “in particular” with “id est”, and also by adding clarifications as to the nature and purpose of the goods claimed, thus making its request unambiguous.

On the second point, the Court observed that to satisfy the conditions of a trademark registrable by the EUIPO, “colours or colour combinations must fulfil three conditions: (1) they must constitute a sign; (2) the sign must be capable of being represented graphically; (3) the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings”.

However, it is necessary that the above must be considered in relation to the relevant public. On this point, the Court held that the Board’s decision was not correctly reasoned: in fact, it referred only to part of the goods claimed in class 9 where consideration had to be given to the perception of a specialised public and instead limited itself to commenting on the remaining goods where the relevant public was to be considered the “wider” public.

This definition was not considered sufficiently clear to define whether the remaining products were intended for the general public or a more limited professional audience, neglecting any consideration of distinctiveness in relation to the relevant public.

As the Board had therefore not sufficiently and clearly defined the relevant public, the General Court annulled the decision for infringement of Article 7(1)(b) EUTMR with regard to the assessment of distinctiveness, and for breach of the duty to state reasons under Article 94(1) EUTMR.

While reiterating that colour marks can only be registered under exceptional circumstances, the judgment at issue emphasises that the central point is the assessment of distinctiveness, which must be determined not in abstract terms, but rather by taking into account the goods/services claimed and the consumers concerned.