CA-2025-000162 - [2025] EWCA Civ 1340

In Sieckmann the CJEU explained what was required by the second condition as follows:

“46.

That graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified.

47.

Such an interpretation is required to allow for the sound operation of the trade mark registration system.

48.

First, the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor.

49.

Next, the entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators.

50.

On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of registration applications and to the publication and maintenance of an appropriate and precise register of trade marks.

51.

On the other hand, economic operators must, with clarity and precision, be able to find out about registrations or applications for registration made by their current or potential competitors and thus to receive relevant information about the rights of third parties.

52.

If the users of that register are to be able to determine the precise nature of a mark on the basis of its registration, its graphic representation in the register must be self-contained, easily accessible and intelligible.

53.

Furthermore, in order to fulfil its role as a registered trade mark a sign must always be perceived unambiguously and in the same way so that the mark is guaranteed as an indication of origin. In the light of the duration of a mark’s registration and the fact that, as the Directive provides, it can be renewed for varying periods, the representation must be durable.

54.

Finally, the object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Consequently, the means of graphic representation must be unequivocal and objective.

55.

In the light of the foregoing observations, the answer to the first question must be that Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”

The Court went on to hold at [69]-[73] that none of the methods of graphical representation of an olfactory sign proposed in that case – a chemical formula, a description in words, the deposit of a sample and a combination of those methods – satisfied these requirements.

In Libertel the CJEU held at [30]-[38] that, in the case of a colour per se, the requirements that the representation be clear, precise, self-contained, easily accessible, intelligible, durable and objective could not be satisfied merely by providing a sample of the colour on a flat surface, but might be satisfied either by including a description of the colour in words or, more readily, by designating the colour using an internationally recognised identification code.

In Shield Mark the CJEU held at [57]-[63] that these requirements were not satisfied by written descriptions such as “the first nine notes of ‘Für Elise’” or “a cockcrow”, nor by an onomatopoeia, but were satisfied by a full musical score written in conventional notation.

In Heidelberger Bauchemie the CJEU held that the mark applied for did not satisfy these requirements for the following reasons:

“33.

Accordingly, a graphic representation consisting of two or more colours, designated in the abstract and without contours, must be systematically arranged by associating the colours concerned in a predetermined and uniform way.

34.

The mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’, as is the case with the trade mark which is the subject of the main proceedings, does not exhibit the qualities of precision and uniformity required by Article 2 of the Directive, as construed in paragraphs 25 to 32 of this judgment.

35.

Such representations would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to repeat with certainty the experience of a purchase, any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark.”

The next two decisions concerned the interpretation of Article 2 of Directive 2008/95/EC and Article 4 of Regulation 207/2009/EC (which replaced Regulation 40/94/EC), but the slight difference in wording between those versions of the legislation and the earlier versions is not material. The first case was not cited in argument, but it is referred to in the next authority, which was cited in argument.

In Case C-578/17 Oy Hartwall ab [EU:C:019:261] Hartwall had applied to register the device shown below accompanied by the description “The colours of the sign are blue (PMS 2748, PMS CYAN) and grey (PMS 877)” as a colour mark, not a figurative mark.

The CJEU held as follows:

“36.

By its second question, the referring court asks, in essence, whether Article 2 of Directive 2008/95 must be interpreted as precluding the registration of a mark, such as that at issue in the main proceedings, submitted, in the application for registration, in the form of a drawing of a colour mark.

37.

In the present case, the referring court states that, according to the application for registration submitted by Hartwall, the sign protection of which is sought is represented by a colour drawing with defined contours, whereas the classification given by Hartwall to the mark registration of which is sought is that of a colour combination without contours.

38.

In that regard, it should be noted that, according to the Court’s settled case-law, a sign may be registered as a mark only if the applicant provides a graphic representation in accordance with the requirement in Article 2 …, to the effect that the subject matter and scope of the protection sought are clearly and precisely determined (see, to that effect, … Libertel, … paragraph 29 and the case-law cited).

39.

The verbal description of the sign serves to clarify the subject matter and scope of the protection sought under trade mark law (see, to that effect, … Shield Mark, … paragraph 59, and, as an example, … Heidelberger Bauchemie, … paragraph 34).

40.

… when the trade mark application contains an inconsistency between the sign, protection in respect of which is sought in the form of a drawing, and the classification given to the mark by the applicant, the consequence of which is that it is impossible to determine exactly the subject matter and scope of the protection sought under trade mark law, the competent authority must refuse registration of the mark on account of the lack of clarity and precision of the trade mark application.

41.

In the present case, the sign protection in respect of which is sought is represented by a figurative drawing, whereas the verbal description relates to a protection concerning two colours alone, that is, blue and grey. Moreover, Hartwall has clarified that it seeks to register the mark at issue as a colour mark.

42.

Those circumstances appear to reveal an inconsistency showing that the application for protection under trade mark law is unclear and imprecise.

43.

Consequently, the answer to the second question is that Article 2 … must be interpreted as precluding, in circumstances such as those in the main proceedings, the registration of a sign as a mark due to an inconsistency in the application for registration, which it is for the referring court to ascertain.”

In Case C-124/18 P Red Bull GmbH v European Union Intellectual Property Office [EU:C:2019:641] the CJEU upheld a decision of the General Court that two registrations by Red Bull of two colours per se, namely blue and silver, did not comply with the second condition. The registrations comprised (i) a pictorial representation consisting of two equally-sized rectangles, one blue and one silver, placed adjacent to each other along a long edge and (ii) a written description which specified the precise shades of blue and silver and stated (in the first case) that “[t]he ratio of the colours is approximately 50%-50%” or (in the second case) “[t]he two colours will be applied in equal proportion and juxtaposed to each other”.

The CJEU held at [37]:

“Where the application is accompanied by a verbal description of the sign, that description must serve to clarify the subject matter and scope of the protection sought under trade mark law and such a description cannot be inconsistent with the graphic representation of a trade mark or give rise to doubts as to the subject matter and scope of that graphic representation (see, to that effect, … Hartwall at paragraphs 39 and 40).”

It is clear from the context that the references in this paragraph to the “graphic representation” are to the pictorial representation.

The CJEU went on to hold at [47]:

“… the General Court did not err in law in concluding, in the judgment under appeal, 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 and … Heidelberger Bauchemie ….”

There have been three decisions of this Court concerning this condition. The first two are Spear v Zynga and Nestlé v Cadbury, which I have already discussed. In Glaxo Wellcome UK Ltd v Sandoz Ltd [2017] EWCA Civ 335, [2017] FSR 33 Glaxo was the proprietor of a trade mark described as follows: “The trade mark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler.” The registration also included INID code 558 (an international code meaning that the trade mark consists exclusively of two or more colours) and the image shown below.

Sandoz challenged the validity of the registration. HHJ Hacon held that it did not comply with the second condition because anyone looking at the register and trying to understand precisely what the mark consisted of was presented with a puzzle to which there were three possible solutions. The first was a mark with the outline and arrangement of dark and light purple colours shown in the visual representation. The second was a mark consisting of the dark purple colour applied to a significant portion of an inhaler, and the light purple colour applied to the remainder, that is to say in any arrangement of colours meeting the written description. The third was a mark having a pattern of dark and light purple colouring taking the form of any one of a number of abstractions said by Glaxo in proceedings in other jurisdictions and before the EUIPO to constitute the mark. This Court upheld that conclusion.

Kitchin LJ gave a clear explanation of the rationale for the second condition which also applies to the first condition, at [36]:

“The reasons for these requirements are plain to see. A mark must always be perceived unambiguously if it is to fulfil its function as an indication of origin. Moreover, the authorities must refuse to register the sign if, upon opposition by the proprietor of an earlier trade mark, the sign is found to be identical to the earlier mark and if the products or services for which registration is sought are identical with those for which the earlier mark is protected. So also, upon opposition by the proprietor of an earlier trade mark, the authorities must refuse to register the sign where, by virtue of its identity or similarly with an earlier mark and the identity or similarity of the relevant goods or services, there exists a likelihood of confusion. Similarly, the owner of a registered trade mark is entitled to prevent a third party from using a sign which is identical to his mark for goods or services which are identical to those for which the mark is protected. He can also prohibit the use of a sign where, by virtue of its identity or similarity with the mark and the identity or similarity of the relevant goods or services, there exists a likelihood of confusion. As Advocate General Philippe Leger explained in his opinion in Heidelberger at [56], assessment of notions of ‘identity’ and ‘risk of confusion’ necessarily implies a precise knowledge of the sign and mark in question, as they are or as they may be seen by the public concerned.”

As counsel for TB submitted, and I agree, the point made by Kitchin LJ towards the end of this paragraph bears emphasis. The legislation requires a comparison to be made between an earlier trade mark and a later trade mark, or between a trade mark and an allegedly infringing sign, in order to determine whether or not they are identical. It would not be consistent with the scheme of the legislation for the earlier trade mark to comprise multiple candidates for comparison capable of giving rise to different answers to the question “identical or not?”.

It should be appreciated, however, that the comparison must be undertaken at the correct level of abstraction. If the trade mark is a word mark, then the trade mark consists of the word as a word. Any sign consisting of the same word will be identical to the trade mark regardless of font, size or colour. Similarly, if the trade mark is a device registered in monochrome (i.e. without any colour claim or limitation), then the trade mark consists of the device as a device. Any sign consisting of the same device will be identical to the trade mark regardless of size or colour. Another way of looking at this is to regard such questions as concerning the scope of protection of the trade mark, rather than the sign of which it consists.

Returning to Glaxo, Kitchin LJ explained at [77]-[79] that none of the three possible interpretations of the Glaxo registration was free from difficulty. He concluded at [80]:

“Stepping back, I believe that the public, including economic operators, looking at the certificate of the Trade Mark on the register, would be left in a position of complete uncertainty as to what the protected sign actually is. In the words of the Board of Appeal in the Seven Towns case, they would be left scratching their heads. [Counsel for Sandoz] submits and I incline to agree, that the third possible interpretation is the best (or at any rate the least bad) of the three for it provides a way of reconciling the INID code, the pictorial representation and the verbal description. However, this is far from clear. In my judgment, the Trade Mark lacks the clarity, intelligibility, precision, specificity and accessibility that the law demands. Moreover, I have no doubt that it would not be perceived unambiguously and uniformly by the public. It also offends against the principle of fairness because the uncertainty as to what the subject matter of the mark actually is gives Glaxo an unfair competitive advantage. These deficiencies in the Trade Mark are compounded by the range of alternatives that the second and the third possible interpretations encompass. Just as in Heidelberger, each of them allows for numerous different combinations of the dark and light purple colours. Consequently, neither of them exhibits the qualities of precision and uniformity required by Article 4 of the EUTMR.”

Counsel for adidas placed some reliance upon the decision of the General Court in Case T-193/18 Andreas Stihl AG & Co v European Union Intellectual Property Office [EU:T:2021:163]. As she accepted, this is not assimilated law, and it is therefore of merely persuasive authority. Even it were assimilated law, it would be less authoritative than the decisions of the CJEU considered above. In that case Stihl had registered a trade mark in respect of “chain saws” described as follows:“The colour orange is applied to the top of the housing of the chain saw and the colour grey is applied to the bottom of the housing of the chain saw”. In addition, the shades of orange and grey were specified. Giro applied to the EUIPO for a declaration of invalidity. The Cancellation Division rejected the application. The Board of Appeal allowed Giro’s appeal, holding that the mark did not satisfy the second condition. The General Court disagreed and allowed Stihl’s appeal. On any view this is simply a decision involving the application of established principles to the particular facts of that case. I would add that it is not easy to reconcile with decisions such as Hartwall and Red Bull.