Eu general court (General Court) A recent ruling (Case number: T-193/18, 2021 years 3 month 24 day) , Revealed in the application for registration of color combination trademark, The importance of submitting accurate trademark descriptions.

　　background　　2008 years 12 month 19 day, Andreas Stihl AG & Co KG (Hereinafter referred to as "Andrea Stihl" ) Application for registration of a European Union colour combination trademark (As shown in the picture below) , Designated control 7 class "Chain saw" commodity. The logo comes in two colors—— "orange (RAL2010) " and "grey (RAL7035) " Combination composition, The attached trademark description is: "Orange is used on the top half of the chain saw housing, Grey is used for the lower half of the chainsaw housing" . (Disputed trademark)

　　2015 years 6 month 24 day, Giro Travel Company SRL (Hereinafter referred to as "Giro Travel" ) Apply to declare the aforesaid registered trademark invalid, That the mark does not comply "Sieckmann" case (Case number: C-273/00) Definitive standard——The drawing of the trademark must be clear, clear, independence, Lasting and objective, Therefore, it cannot be used to distinguish the goods in question. GiroTravel Think that, orange (RAL2010) With grey (RAL7035) The color combination is widely used in the forestry field on tool commodities, So consumers may not see it as a source differentiator.

　　The invalidation Division of the European Intellectual Property Office rejected the invalidation request, Giro Travel Lodge an appeal. (European Union Intellectual Property Office) The second Appeal Board quashed the decision of the invalid Department, Ruling invalidates the disputed color trademark. In the opinion of the Appeal Board, A color combination trademark consisting of only two colors: orange and gray, Unable to transfer the trademark owner "Chain saw" Goods are distinguished from the same goods of other enterprises.

　　Andrea Stihl Appeal to the EU General Court. The court heard and upheld the grounds of appeal, The judgment quashed the conclusion of the Second Board of Appeal.

　　Appeal to the EU General Court

　　Andrea Stihl On the grounds of appeal, In accordance with "European Community Trade mark Regulation (The first 40/94 No) " (defunct, The current norm is "Eu trade mark regulation (The first (EU) 2017/1001 No) " ) The first 4 article, And in conjunction with the Ordinance No 7 (1) (a) Provision of article, The drawing of the disputed color trademark has met the requirements of clarity and accuracy. In addition, The Appellant maintains that the pattern of the disputed trademark is arranged in a fixed order, Use the corresponding colors in a predetermined and uniform manner, Use the color code to determine the specific hue of the color, And contains a very specific trademark description, Therefore, Has satisfied the European Court of Justice in Heidelberger Bauchemie case (Case number: C-49/02) The requirements identified in the judgment.

　　The EU Intellectual Property Office reiterated its position, Uncertain in Heidelberger Bauchemie In the case, Whether the court considers the registration to contain two colors, A combination of color blocks of the same size and horizontal juxtaposition, Equal to registered "Arbitrary shape" Color combination, Or say, The reason why this pattern is not clear is simply that it is inaccurately described?

　　In addition, The EU Intellectual Property Office argues, There are different design possibilities for the shell of the goods using the color combination trademark at issue in this case, And trademark descriptions cannot narrow down the range of possible combinations, Nor has anything been added that adequately defines the color order of the applied trademark, Exclude other permutations of possible statements.

　　judgment

　　The General Court of Justice of the European Union states, Although the two colors are defined by specifying the color code, The specific shape of each color block cannot be determined, But the description of the trademark application, It has been specified that the trademark will be used on the chain saw housing, The shape is the shape of the shell of the chainsaw covered by the color, And further pointed out that the upper part of the shell is orange, The bottom half is grey.

　　The court held that, This description has reduced the shape of the trademark to what a chainsaw case might take, Limiting the range of design changes that consumers can perceive, The two colors are not "In any conceivable shape" combine, Therefore conform to "European Community Trade mark Regulation (The first 40/94 No) " The first 4 Article requirements for accuracy and uniformity.

　　Court determination, A trademark at issue is a trademark that arranges orange and gray in a predetermined and uniform order. Therefore, The relevant professional public can identify the origin of goods through the EU trademark, The competent authority and other business operators may also clarify the scope of protection of the rights enjoyed by the trademark owner.

　　comment

　　The ruling by the European Union General Court of Justice, The description of the trademark in the color combination trademark application is revealed, The significance in evaluating whether a trademark can be used as a source identification mark. In addition, The decision also provides clear guidance on how color-combination trademarks interact with goods that are not homogeneous in appearance and have different design possibilities, Just describe exactly where each color applies. Future applicants for other similar trademarks, One important lesson to learn from this case: The more detailed the trademark description, the better.

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights