IP-2024-000037 - [2025] EWHC 547 (IPEC)

‘The colour purple (Pantone 2685C), as shown on the form of the application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.

‘15.  Some general points relating to the requirements of art.2 of the directive, which are relevant to this case, can be picked out of the judgments:

The conditions

Purpose

Identification

Multitude of forms

Colour without a message

Colour as a sign conveying a message

Graphic representation of colour

Colour without form/in a multitude of forms

‘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.’

‘[34] … It seems to me, however, that two further points emerge from the decisions of the CJEU to which I have referred which also have a bearing on the issues before us. The first concerns the constituent elements of the graphic representation of a sign consisting of one or more colours per se and for which a registration is sought. The INID code of course tells the authorities and the public the nature of the mark. That aside, it is, I believe, clear from Libertel [2004] F.S.R. 4 at [30]–[38] and [68] that, in the case of an application to register a single colour per se as a trade mark, the filing of a sample of the colour alone does not, of itself, constitute a graphic representation within the meaning of art.4 of the EUTMR. The filing of a sample of the colour together with a verbal description of the colour may, however, do so, provided the description is clear, precise, self-contained, easily accessible, intelligible and objective. Similarly and as the CJEU explained in Heidelberger [2004] E.T.M.R. 99 at [32]–[36] and [42], in the case of an application to register two colours per se as a trade mark, samples of the two colours together with a verbal description of those colours may constitute a graphic representation provided that the application for registration includes a systematic arrangement associating the colours in a predetermined and uniform way. The graphic representation therefore encompasses both the visual representation and any verbal description.

[35] Secondly, the function of the graphic representation is, in particular, to define the sign so that the subject matter for which protection is sought or has been secured can be clearly and precisely identified by the competent authorities and the public. Moreover and importantly, in order to fulfil its role as a trade mark and meet the requirements of precision and clarity, the sign must always be perceived unambiguously and uniformly. In my judgment it follows that if the authorities and the public are left in a state of confusion as to the nature of the sign then these requirements will not be satisfied.

[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.’

‘[64] … I do not detect in the guidance given by the CJEU any suggestion that, in the case of applications to register marks consisting of one or more colours per se. the pictorial representation is paramount and the verbal description is secondary. To the contrary, the Court has focused on the graphical representation as a whole and emphasised that its function is to define the mark in the public register in such a way as to make it accessible to the authorities and to the public and to ensure that its scope is clear and precise.’

‘(1) If the applicant does not wish to claim any special graphic feature or colour, the mark shall be reproduced in normal script as for example, by typing the letters, numerals and signs in the application …

‘(2) In cases other than those referred to in paragraph 1 and save where the application is filed by electronic means, the mark shall be reproduced on a sheet of paper separate from the sheet on which the text of the application appears. … Where it is not obvious, the correct position of the mark shall be indicated by adding the word “top” to each reproduction ….’

In cases to which paragraph 2 applies, the application shall contain an indication to that effect. The application may contain a description of the mark.

…

Where registration in colour is applied for, the representation of the mark under paragraph 2 shall consist of the colour reproduction of the mark. The colours making up the mark shall also be indicated in words and a reference to a recognized colour code may be added.’

‘[65] … As Mr Howe points out, Rule 3(2) applies to all marks to which Rule 3(1) does not apply. In other words, it applies to figurative marks, colour per se marks and other special categories of marks such as three dimensional marks. In accordance with Rule 3(3), the applicant must, in cases to which Rule 3(2) applies, give an indication to that effect. This paragraph also says that the application may also contain a description of the mark. This permissive language caters for those applications, for example for the registration of some figurative marks, which do not require any description to render them clear and precise. However, it seems to me quite impossible to infer from its terms that the guidance given by the CJEU as to what is needed to satisfy the requirements of art.4 of the EUTMR in the case of an application to register as a trade mark one or more colours per se should be in any way qualified. Indeed, Rule 3(5) says that where the registration of any mark in colour is applied for, the representation of the mark must consist of a colour reproduction of the mark and the colours making up the mark must also be indicated in words. Moreover and importantly, Rule 3(2) says nothing about precedence between the pictorial representation and the verbal description where both have been provided.’

‘[75] … The judge held, correctly in my view, that the designation of the Trade Mark with INID code 558 means that it is and would be understood to be a mark which consists exclusively of one or more colours. It is, in short, a colour per se mark. It is not a two-dimensional figurative mark having the appearance of the pictorial representation; nor is it a three-dimensional mark having a particular shape and coloured in a particular way. Further, anyone inspecting the register would understand that, as a colour per se mark, registered in respect of inhalers, it is at least implied that it is not limited to the colours as applied to the particular shape of inhaler depicted in the registration.

[76] Against this background, the issue for the public, including economic operators, inspecting the register is how the Trade Mark is to be understood.’

‘[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, judgment of 27 November 2003, Shield Mark BV v Kist (t/a Memex) (C-283/01) EU:C:2003:641 at [59], and, as an example, judgment of 24 June 2004, Heidelberger Bauchemie EU:C:2004:384 at [34]).

[40] As the Advocate General set out, in essence, in points AG60–AG63 of his Opinion, 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.’