Practice Amendment Notice

PAN 2/07 - Issued 25 May 2007

Graphical Representation

This notice clarifies practice in relation to how colour marks should be filed and rights appropriately limited to accord with the ECJ Dyson Judgment (C-321/03). Paragraph 16.1.1 has been amended.

16.1.1 Graphical representation

In Libertel (C-104/01), the ECJ decided that to be represented graphically, colour marks must be presented in a way that is “clear, precise, selfcontained, easily accessible, durable and objective” (the Sieckmann criteria)(C273/00). The court determined that providing a sample of the colour(s) proposed for registration on paper is not sufficient by itself to satisfy the requirement for graphical representation of the sign. However, the court stated that the Sieckmann criteria may be satisfied by designating the colour using an internationally recognised colour identification code.

Single Colours

With that in mind, marks consisting of colour alone will be considered to be graphically represented if they are filed in the form of a written description of the colour(s)(eg dark blue) and are accompanied by the relevant code(s) from an internationally recognised colour identification system. There are a number of colour identification systems in existence e.g. Pantone®, RAL and Focoltone®. Applications filed electronically may also use an RGB profile to define the colour when filed in association with an electronic image of the colour. This is not an exhaustive list and the choice of which system to use is one for the applicant. Where a sample of the colour and a description in words are used to represent a colour mark, the two must be integrated so as to disclose the mark applied for in an unambiguous manner. For example, the colour shown and any colour code should not contradict each other.

A degree of interpretation of the graphical representation is permissible. For example, it is permissible to require third parties to look up the colour which corresponds with a particular colour code. However, there are limits to what can reasonably be expected of third parties. It must be reasonably practicable for persons inspecting the register, or reading the Trade Mark Journal, to be able to gain an understanding from the graphical representation of what the trade mark is.

Representations which are precise but impossible to interpret without costly specialist equipment or services, place too high a burden on third parties and are likely to be rejected because they are not “easily accessible.” Accordingly, a mark defined as “a blue bottle of optical characteristics such that if the wall thickness is 3mm the bottle has, in air, a dominant wavelength of 472 to 474 nanometres, a purity of 44 to 48%, an optical brightness of 28 to 32%” was rejected by The Appointed Person in Ty Nant Spring Water Ltd’s Application [2000] RPC 55, because it would require third parties to use a spectrophotometer to ascertain whether a particular colour was or was not covered by the description, and in fact served to veil the identity of the sign (cobalt blue).

Combinations of Colours

In Heidelberger Bauchemie GmbH, Case C-49/02, the ECJ introduced an additional requirement for marks consisting of a combination of colours in the abstract, without contours. In this case the representation must also include “a systematic arrangement associating the colours in a predetermined and uniform way.

”Unfortunately, it is not very clear what this means in practice. The ECJ offered no examples of the ways in which the requirement might be satisfied.

However, the following representation of CTM number 2177566 appears to plainly fall within the guidance.

E2177566

Goods/services: Cl 6, 11, 19 and 20

Description: The distribution and ratio of the colours to each other is 50 - 50, whereby the colour blue runs horizontally above the colour red, forming a striped whole.

Indication of colour: Blue: Ral 5015, red: Ral 2002.

Alternative ways of representing colour marks graphically may be accepted as long as they satisfy the criteria set out above.

Representing Colour(s) in the Abstract as Opposed to Colour(s) Applied to the Goods or to their Packaging

The ECJ has made it clear that there is no reason why, in principle, colour(s) cannot be registered in the abstract, as opposed to specific applications of colour such as being applied to the exterior of the goods themselves, or to their packaging.

Descriptions such as “as shown on the form of application” have been found to be an inadequate means of limiting the mark to the precise form shown in the pictorial representation of the mark on the application form. See the Advocate General’s Opinion in Case C-321/03, Dyson Ltd v Registrar of Trade Marks (subsequently endorsed in the ECJ Judgment of 25 January 2007). Consequently, this wording will no longer be accepted as limiting the mark to the form shown. Instead more express wording, such as in the case of colour marks “in the [arrangement/position] depicted in the pictorial representation of the mark” should be used instead.

Applicants should consider whether the way colour is used forms an essential part of the subject matter of their trade mark. For example, if evidence of acquired distinctiveness is likely to show that a specific colour has come to be recognised as a trade mark when it is used in a particular manner, for example on the sides of the overhead canopy of a fuel service station, it may be advisable to define the mark in this way from the outset. It is not possible to amend the trade mark application after it has been made in ways which substantially affect the identity of the mark.

Failure to Meet the Requirements for Graphical Representation of the Trade Mark

An application which does not meet the requirements will face an objection under Section 32(2)(d) of the Act because it does not contain a graphical representation of the trade mark. The applicant or his representative will be notified in writing about this and given two months to remedy this deficiency, under Rule 11. Failure to remedy the deficiency within this two month nonextendable period will result in the application being deemed never to have been made.

If the requirements are subsequently met, the filing date of the application will be the date upon which everything required by Section 32(2) is received at the registry.