On 5 November 2013 this blog hosted a piece called "The Strange Case of the Colour Red Trademark". To remind readers of its content, the post told the story of the Spanish trademark registration no. M3062401 consisting on a square red coloured box for goods in International Classes 18 and 25. Since colours per se were not common in the Spanish trademark registry due to the rather strict interpretation of the Spanish Supreme Court, the colour red trademark immediately attracted this blogger's attention. After reviewing the whole file, he realized –-as did the examiner on appeal after he refused the sign on first examination— that the applicant did not seek a colour per se registration, but a sign consisting on red square, which on top had been extensively used prior to the registration to the point it might have acquired distinctiveness. The thriller was thus resolved.

Yesterday the Spanish newspaper "El Pais" released a piece of news titled "Orange is not owner of the colour orange". It told about the attempt from the multinational telecommunications company Orange Personal Communication Services Limited to secure in Spain the international trademark registration no. 908,137, that run all the way to the Supreme Court to be, finally, refused. Like the red square mark, that one consisted of an orange square mark, and like the red square mark, the orange square mark was granted by the Spanish Patent and Trademark Office ("The Spanish PTO") once it was clear that the registration was not a colour per se mark, but a mere coloured shape. 

This time however, Orange competitor Jazz Telecom had filed an administrative appeal in order to reverse this granting decision arguing lack of distinctiveness. In 14 June 2012 the corresponding Administrative Court in Madrid ("Sala de lo Contencioso-Administrativo del Tribunal Superior de Justicia de Madrid"), ruled in favor to Jazz Telecom and reversed the Spanish PTO decision, thus refusing the registration of the square orange mark. Orange filed an appeal to the Supreme Court, and this latter –which acceded to review given the scant case law on color marks in Spain- confirmed refusal on 2 December 2013.

The Supreme Court considered it right with Jazz Telecom that the strict interpretation to register colour per se marks was applicable to marks consisting on a colour shaped by banal, trivial or elemental geometric figures, such as the orange square mark.

According to the Court, it was evident that the main element in a global assessment of the mark was the color itself as the square was a negligible feature. And the colour itself was not, save extraordinary circumstances, eligible for trademark registration. From this point of view, the shaped coloured trademark was not different from the colour per se trademark. The Court remarked this idea by citing the way Jazz Telecom described the mark (pardon my French): "the color orange is represented in the most trivial, insignificant, banal, simple, rudimentary, primitive, basic and elemental way as the human intellect could imagine, that is: within a simple, plain, bidimensional, unedged square with no feel, no relief, no perspective and no ornamentation at all". The Court reminded that the OHIM refused the identical mark on 28 August 2006 (CTM 3,086,923) and that its view was consistent with the case law of the General Court of the EU, citing T-282/09 Fédération internationale des logis / OHIM where the mark consisted of a basic (albeit less boorish) square contained the colour green.

The Court also evaluated the poll filed by Orange to support distinctiveness through use, and considered that 400 individuals which, out of 1,000, did associate the orange square mark with the applicant would not represent a percentage by which one could understand that the mark had acquired a secondary meaning.