Judgments nº T-101/15 of Tribunal General de la Unión Europea, November 30, 2017

• Resolution Date: November 30, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-101/15

In Joined Cases T-101/15 and T-102/15,

Red Bull GmbH, established in Fuschl am See (Austria), represented by A. Renck, lawyer,

applicant,

supported by

Marques, established in Leicester (United Kingdom), represented initially by R. Mallinson and F. Delord, and subsequently by R. Mallinson, Solicitors,

intervener,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Optimum Mark sp. z o.o., established in Warsaw (Poland), represented by R. Skubisz, M. Mazurek, J. Dudzik and E. Jaroszyńska-Kozłowska, lawyers,

TWO ACTIONS brought against two decisions of the First Board of Appeal of EUIPO of 2 December 2014 (Case R 2037/2013-1 and Case R 2036/2013-1, respectively), relating to invalidity proceedings between Optimum Mark and Red Bull,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, E. Buttigieg and B. Berke (Rapporteur), Judges,

Registrar: J. Weychert, Administrator,

having regard to the applications lodged at the Court Registry on 26 February 2015,

having regard to the responses of EUIPO lodged at the Court Registry on 11 June 2015,

having regard to the responses of the intervener lodged at the Court Registry on 5 June 2015,

having regard to the replies lodged at the Court Registry on 1 September 2015 in Case T-101/15,

having regard to the intervener’s rejoinders lodged at the Court Registry on 19 November 2015,

having regard to the order of 18 November 2015 granting Marques leave to intervene in support of the form of order sought by the applicant,

having regard to the statements in intervention of Marques lodged at the Court Registry on 6 January and 22 March 2016,

having regard to the observations of the applicant lodged at the Court Registry on 22 March 2016,

having regard to the observations of EUIPO lodged at the Court Registry on 21 March 2016,

having regard to the observations of the intervener lodged at the Court Registry on 22 March 2016,

having regard to the decision of 9 December 2016 joining Cases T-101/15 and T-102/15 for the purposes of the oral part of the procedure and of the judgment,

having regard to the change in the composition of the Chambers of the General Court,

further to the hearing on 10 March 2017,

gives the following

Judgment

Background to the dispute

In Case T-101/15

1 On 15 January 2002, the applicant, Red Bull GmbH, filed an application for registration of an EU trade mark at the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the combination of two colours per se reproduced below (‘the first contested mark’):

3 By a communication dated 30 June 2003, the applicant submitted additional documents to prove the distinctive character acquired through use of the first contested mark. On 11 October 2004, the applicant submitted a description of the first contested mark that was worded as follows: ‘Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%-50%’.

4 The goods in respect of which registration was sought are in Class 32 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Energy drinks’.

5 The EU trade mark application was published in Community Trade Marks Bulletin No 10/2005 of 7 March 2005. The first contested mark was registered on 25 July 2005 under number 002534774, with an indication that it had acquired distinctive character through use and the description referred to in paragraph 3 above.

6 On 20 September 2013, Optimum Mark sp. z o.o. (‘the intervener’) filed an application for a declaration of invalidity of the first contested mark on the basis of Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), in conjunction with Article 7(1)(a), (b) and (d) of that regulation (now Article 7(1)(a), (b) and (d) of Regulation 2017/1001), and of Article 52(1)(b) of that regulation (now Article 59(1)(b) of Regulation 2017/1001), in respect of all the goods referred to in paragraph 4 above.

7 The application for a declaration of invalidity was based on the following grounds:

- the first contested mark does not meet the requirements of Article 7(1)(a) of Regulation No 207/2009 since its graphic representation does not satisfy the conditions laid down in case-law, according to which a graphic representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective and must be systematically arranged by associating the colours in a predetermined and uniform way;

- the wording of the description accompanying the application for registration of the first contested mark allows for numerous different combinations of ratios of ‘approximately’ 50% to 50% of the two colours and therefore numerous arrangements with the result that consumers would not be able to repeat with certainty a purchase experience.

In Case T-102/15

8 On 1 October 2010, the applicant filed a second application for registration of an EU trade mark with EUIPO pursuant to Regulation No 207/2009. Registration as a mark was sought for the combination of two colours per se reproduced below (‘the second contested mark’):

9 The goods in respect of which registration was sought are in Class 32 of the Nice Agreement and correspond to the following description: ‘Energy drinks’.

10 The EU trade mark application was published in Community Trade Marks Bulletin No 48/2011 of 29 November 2010.

11 On 22 December 2010, the examiner issued a notice of absence of formal requirements pursuant to Rule 9(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), stating that, in the field for describing the trade mark, the proportions in which each colour would be applied had not been indicated and the way in which those colours would appear had not been specified. The examiner requested that the applicant specify ‘in which proportion the two colours will be applied (for example, in equal proportion) and how they will appear’.

12 On 10 February 2011, the applicant stated to the examiner that ‘in compliance with [the examiner’s] notification dated 22 December 2010, [the applicant] herewith inform[s] [EUIPO] that the two colours will be applied in equal proportion and juxtaposed to each other’.

13 On 8 March 2011, the second contested mark was registered on the basis of distinctive character acquired through use, with the indication of the colours ‘blue (Pantone 2747C), silver (Pantone 877C)’ and the following description: ‘The two colours will be applied in equal proportion and juxtaposed to each other’.

14 On 27 September 2011, the intervener filed an application for a declaration of invalidity of the second contested mark on the basis of Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(a), (b) and (d) of that regulation, and of Article 52(1)(b) of the regulation, in respect of all the goods covered by the mark.

15 The application for a declaration of invalidity was based on the following grounds:

- the second contested mark does not meet the requirements of Article 7(1)(a) of Regulation No 207/2009 since its graphic representation does not satisfy the conditions laid down in case-law, according to which a graphic representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective and must be systematically arranged by associating the colours in a predetermined and uniform way;

- since the term ‘juxtaposed’ could be understood as ‘having a border in common’ or ‘placed side by side’ or ‘dealt with close together for contrasting effect’, the description of the second contested mark does not indicate the type of arrangement in which the two colours would be applied to the goods and is therefore not self-contained, clear and precise.

In Cases T-101/15 and T-102/15

16 By two decisions of 9 October 2013, the Cancellation Division declared the first contested mark and the second contested mark (together ‘the contested marks’) invalid, finding that the graphic representation of those marks constituted the ‘mere juxtaposition of two or more colours, designated in the abstract and without contours’, in accordance with the judgment of 24 June 2004, Heidelberger Bauchemie (C-49/02, EU:C:2004:384, paragraph 34), and did not exhibit the qualities of precision and uniformity required by Article 4 of Regulation No 207/2009 (now Article 4 of Regulation 2017/1001), since it allowed 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. In addition, it would not allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the contested marks. Thus, the graphic representation of the contested marks, accompanied by the description (in the two variations set out in paragraphs 3 and 13 above), did not make it possible to determine the specific arrangement of colours in a way which defined one particular combination of colours presented in equal proportions, and therefore the subject of the protection afforded by the...