The brief was filed on 16 July 2024 after the EU General Court granted MARQUES permission to intervene.

MARQUES requests that the Court annul the decision of the EUIPO Fifth Board of Appeal, which upheld the refusal to register the two-colour combination mark (pictured) for goods and services in classes 1, 4, 35 and 37.

Colour combination

The application is an international registration designating the EU for the combination of gentian blue (RAL 5010) and yellow green (RAL 6018) in the arrangement shown (filing number 1593116).

In March 2023, the application was found to be non-distinctive under Article 7(1)(b) of the EUTM Regulation in relation to: goods relating to fuels, hydrogen, oils and vehicle equipment (in classes 1 and 4); retail/wholesale services relating to these goods and relating to hot water, medicinal and mineral water (in class 35); and building, construction and demolition services relating to facilities providing those goods/services (in class 37). It was allowed in relation to some other services.

Upholding the examiner’s decision, in November 2023 the Fifth Board of Appeal held that the colour combination represents the generic characteristic of eco-friendliness, which is common in the field of automobiles and fuels (Case R 798/2023-5).

OMV appealed that decision to the EU General Court on 22 January 2024 (Case T-38/24).

Three reasons decision is flawed

MARQUES argues that the decision is flawed and amounts to an infringement of Articles 7(1)(b) and 94(1) EUTMR for three reasons:

(1) MARQUES perceives the Contested Decision as a manifestation of a too strict approach towards colour combination trade marks. The Fifth Board of Appeal applied the stricter single colour per se standards to a colour combination.

(2) when assessing the lack of any distinctiveness, the Contested Decision rather speculates about the consumer perception of colours and colour combinations as opposed to rely on facts or factual indications.

(3) the Contested Decision excludes use- and market-related circumstances, which impact on the perception of colours and colour combinations by the relevant public, from being taken into account under Article 7(1)(b) EUTMR.

In conclusion, the brief states:

MARQUES is concerned that the Contested Decision will cement an overly restrictive approach towards colour combination trade marks, which goes against the literal meaning of relevant legal provisions, against the actual market practice and against the actual consumer perception.

The application of Article 7(1)(b) EUTMR, in particular the lack of fact-based findings as a basis for holding that there is a ground of refusal, as exemplified in the Contested Decision, forces Applicants of colour combination trade marks to prove acquired distinctiveness pursuant to Article 7(3) EUTMR in order to obtain EU wide protection. This hurdle, however, is practically insurmountable for most applicants since the ECJ decision Nestlé v Mondelez prohibits a global assessment of the EU wide market but instead requires a country by country approach...

The application of the law as exemplified in the Contested Decision, as a result, further curtails the already narrow possibility to successfully register a colour combination EUTM. This, in turn, practically bars colour combination trade marks from registration, despite their undisputable role as effective tools of brand communication and badges of origin in the marketplace.

MARQUES is represented by Ana Padial, Jakub Słupski and Sebastian Fischoeder, all members of the Amicus Curiae Team, which is chaired by Roderick Chalmers.

You can read the full submission on the MARQUES website here.

Picture taken from court documents

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