July–August, 2019 Vol. 109 No. 4

Free Ride or Free Speech? Predicting Results and Providing Advice for Trademark Disputes Involving Parody Kathleen E. McCarthy

More Than Fifty Shades of Grey: Single Colors, Position Marks, and the Self-Containment Criterion Eugene C. Lim

Commentary: Brands Behaving Badly Sonia K. Katyal

INTERNATIONAL TRADEMARK ASSOCIATION

Powerful Network Powerful Brands 655 Third Avenue, New York, NY 10017-5646

Telephone: +1 (212) 642-1733 email: tmr@inta.org Facsimile: +1 (212) 768-7796 OFFICERS OF THE ASSOCIATION DAVID LOSSIGNOL ....................................................................................................................... President AYALA DEUTSCH ................................................................................................................ President-Elect TIKI DARE ........................................................................................................................... Vice President ZEEGER VINK ...................................................................................................................... Vice President JOMARIE FREDERICKS ................................................................................................................ Treasurer DANA NORTHCOTT ...................................................................................................................... Secretary ANNA CARBONI ............................................................................................................................. Counsel ETIENNE SANZ DE ACEDO ..................................................................................... Chief Executive Officer

The Trademark Reporter Committee

EDITORIAL BOARD EDITOR-IN-CHIEF, CHAIR STAFF EDITOR-IN-CHIEF JESSICA ELLIOTT CARDON WILLARD KNOX

Senior Editors GLENN MITCHELL

RAFFI V. ZEROUNIAN FABRIZIO MIAZZETTO PAMELA S. CHESTEK BRYAN K. WHEELOCK ELISABETH KASZNAR FEKETE ANDREW J. GRAY IV

Senior Staff Editor Staff Editor BEVERLY HARRIS ELIZABETH VENTURO

Editors TARA AARON BRUCE W. BABER JOLIEN BARBIER MARTIN J. BERAN DANIEL R. BERESKIN SHELDON BURSHTEIN ROBERT H. CAMERON SUJATA CHAUDHRI JACQUELINE CHORN THEODORE H. DAVIS JR. ANNE DESMOUSSEAUX MEGHAN DILLON KAREN L. ELBURG MATTHEW EZELL DÉSIRÉE FIELDS ALFRED C. FRAWLEY LESLEY MCCALL GROSSBERG MICHAEL HANDLER NATHAN HARRIS

GUY HEATH JANET L. HOFFMAN BARRY R. HORWITZ BRUCE ISAACSON E. DEBORAH JAY SIEGRUN D. KANE PETER J. KAROL J. MICHAEL KEYES REMCO KLÖTERS JENNIFER KWON SCOTT J. LEBSON JOHN LINNEKER NELS T. LIPPERT JOEL G. MACMULL DOUGLAS N. MASTERS J. DAVID MAYBERRY BRYCE J. MAYNARD J. THOMAS MCCARTHY

MARCOS MERCADO GEORGE W. MOXON II AMANDA NYE BRANDON M. RESS MICHIEL RIJSDIJK TOM SCOURFIELD JENNIFER S. SICKLER RINITA SIRCAR RANDEL S. SPRINGER SARA SULEIMAN PAUL TACKABERRY IFEYINWA A. UFONDU MARTIN VIEFHUES VERENA VON BOMHARD JEFFREY A. WAKOLBINGER RITA WEEKS JOHN L. WELCH JIAN XU JOSEPH S. YANG

Advisory Board MILES J. ALEXANDER WILLIAM M. BORCHARD CLIFFORD W. BROWNING LANNING G. BRYER SANDRA EDELMAN ANTHONY L. FLETCHER

ROBERT M. KUNSTADT THEODORE C. MAX KATHLEEN E. MCCARTHY JONATHAN MOSKIN VINCENT N. PALLADINO JOHN B. PEGRAM ROBERT L. RASKOPF

PASQUALE A. RAZZANO SUSAN REISS PIER LUIGI RONCAGLIA HOWARD J. SHIRE JERRE B. SWANN, SR. STEVEN M. WEINBERG

The views expressed in The Trademark Reporter are those of the individual authors and do not necessarily reflect those of INTA.

The Trademark Reporter (ISSN 0041-056X) is published electronically six times a year by the International Trademark Association, 655 Third Avenue, New York, NY 10017-5646 USA. INTA, the INTA logo, INTERNATIONAL TRADEMARK ASSOCIATION, POWERFUL NETWORK POWERFUL BRANDS, THE TRADEMARK REPORTER, and inta.org are trademarks, service marks, and/or registered trademarks of the International Trademark Association in the United States and certain other jurisdictions.

Vol. 109 TMR 779

MORE THAN FIFTY SHADES OF GREY: SINGLE COLORS, POSITION MARKS, AND THE SELF-

CONTAINMENT CRITERION

By Eugene C. Lim∗

Table of Contents

I. Introduction ............................................................................. 780 II. Single Colors as Nontraditional Trademarks: Libertel,

Cadbury, and Their Uncertain Legacy .................................. 783 III. “Law in Theory” vs. “Law in Practice”: Are Single-Color

Trademarks Really Registrable in the UK and EU? ............. 790 IV. Reconciling the Tension Between Libertel / Cadbury

and Sieckmann: Charting the Future Trajectory of the UK Approach to Single-Color Trademarks ............................ 803

V. Policy Implications of a Spatial Delimitation Requirement: Should Single-Color Trademarks Be Registrable? ............................................................................. 806

VI. On the Intersection of Color, Shape, and Position Trademarks: A Closer Look at Hybridization and Its Impact on Registrability ......................................................... 811

VII. Conclusion ............................................................................... 817

∗ LL.M., S.J.D. (University of Toronto); Faculty Member, School of Law, City University

of Hong Kong.

780 Vol. 109 TMR

I. INTRODUCTION From the soothing pink hues of PEPTO-BISMOL to the

invigorating blue tones of VIAGRA capsules and the rich, velvety purple shades of Cadbury chocolate packaging, color has always played a vibrant role in communicating brand and product signals to consumers at large.1 However, the extent to which single, contourless colors can be registered as trademarks in the European Union (EU) and United Kingdom (UK) is by no means a “black and white” issue.2 As a group of sensory cues that have become known compendiously as “exotic” or “nontraditional” signs, colors—along with scents, sounds, and tastes—often encounter difficulty when it comes to registration.3 One of the primary stumbling blocks that color trademarks have to overcome in the registration process is the lack of inherent distinctiveness. Nevertheless, even color-based trademarks that have acquired distinctiveness may not be registrable if they are not represented with sufficient precision, clarity, and objectivity.4 This has prompted commentators to suggest that while the registration of color per se trademarks may be possible in theory, in practice registration is often unattainable.5

1 Despite the power of color in conveying product messages, attempts to register color as

a trademark have not always been successful. Such was the case for the color pink used by Pepto-Bismol in the U.S. case of Norwich Pharmacal Co. v. Sterling Drug Inc., 167 F. Supp. 427 (N.D.N.Y. 1958). In this case, the U.S. Court of Appeals for the Second Circuit held that the pink color for PEPTO-BISMOL was “designed to present a pleasing appearance to the customer and to the sufferer” and that it served a “psychologically soothing” function. The color pink was therefore not registrable as a trademark as a result of this functional character. See also Daniel R. Schechter, Qualitex Co. v. Jacobson Prods., Inc.: The Supreme Court “Goes for the Gold” and Allows Trademark Protection for Color Per Se, 5 Fordham Intell. Prop. Media & Ent. L.J. 481, 491 (1995).

2 There are indeed shades of uncertainty that characterize the legal position in the UK vis-à-vis the registrability of colors as trademarks. The title of this article recognizes these uncertainties—the so-called “shades of grey” in the debate, while also alluding to the not uncommon use of the phrase “shades of . . .” in popular culture. Fifty Shades of Grey is the name of a novel written by British novelist E.L. James, while “Forty Shades of Green” is a song about Ireland written and first performed by singer Johnny Cash. In Julius Stobbs & Savan Bains, What Now for UK Colour Trademark Law?, Intell. Prop. Mag. 34, 35 (December 2013/January 2014), Stobbs and Bains note that “[t]here is a shade of grey covering trademark law relating to colour.”

3 See, e.g., Mitchell Adams & Amanda Scardamaglia, Non-Traditional Trademarks: An Empirical Study, in Irene Calboli & Martin Senftleben, eds., The Protection of Non-Traditional Marks: Critical Perspectives (Oxford University Press, 2018), 41, citing the graphical representation requirement as a criterion that can limit the registrability of nontraditional trademarks, such as sound and scent marks.

4 See, e.g., Société des Produits Nestlé S.A. v. Cadbury UK Limited [2013] EWCA Civ 1174. The judgment by the EWCA reversed the earlier holding by Judge Birss QC in Société des Produits Nestlé S.A. v. Cadbury UK Limited [2012] EWHC 2637 (Ch).

5 See Joshua Marshall, Colour Trade Marks: Certainty, Utility or Impossibility 12(10) J. Intell. Prop. L. & Prac. 860, 860, 862 (2017), noting that the difficulty of registering colors stems from the conflict between certainty and utility. While defining the perimeters of a color trademark may allow consumers to perceive it as an indicator of origin, spatial delimitation causes the sign in question to become a figurative device mark, rather than

Vol. 109 TMR 781 It appears that color trademarks in the EU and UK contexts generally have to be spatially delimited, or sufficiently defined by contours, outlines, and boundaries, in order to be eligible candidates for registration.6

In view of the practical difficulties facing attempts by traders to assert a monopoly over the use of color in commerce, trademark lawyers are becoming increasingly aware of the distinction between the “law in theory” and the “law in practice” where the registration of color trademarks is concerned. The observation that color trademarks are difficult to register in the EU is therefore not new. However, what is perhaps missing is an understanding of how the criterion of “self-containment,” as articulated in the seminal Sieckmann decision, may have implicitly driven the outcomes of many of the leading trademark cases in the EU and UK. Although courts and commentators have generally acknowledged that single colors are unlikely to satisfy the Sieckmann criteria, relatively little attention has been given to the specific criterion of self-containment. This article argues that this criterion has been neglected in the current literature, and seeks to address this neglect by explaining how the hidden hand of self-containment, and the way in which it has been applied, have resulted in many otherwise distinctive colors being denied registration. This article further argues that the self-containment requirement in Sieckmann directly contradicts earlier EU precedent, resulting in conceptual uncertainties for traders and corporations seeking to develop color-based trademarks. It is therefore imperative that courts and policymakers address this contradiction by revisiting the self-containment criterion. This article suggests that the hidden hand of the self-containment criterion is also at work in the recent CJEU judgment in Louboutin, and offers some thoughts on the impact of “shape/shade” hybridization on the registrability of a color trademark. Building upon this discussion, this article outlines the major policy options available in clarifying the regime for the registration of color per se trademarks in the EU.

Although EU laws and regulations will, formally speaking, no longer have the same impact on the UK after Brexit,7 it should be

a color per se. As a result, the utility of registering a color decreases if it has to be defined by spatially delimiting features such as shapes.

6 Id. at 864, noting “[A]pplicants are forced to put some form of spatial limitation around the scope of the trade mark.”

7 See the European Union (Withdrawal) Act 2018, which seeks to ensure that European law will no longer apply in the UK upon the withdrawal of the UK from the EU, and to remove the power of EU institutions to legislate for the UK. To facilitate this transition, the Act will enable already-existing (and directly applicable) EU law to be transposed into UK law prior to the UK’s official withdrawal from the EU. In addition, the Act will confer limited powers on the UK government to adapt or remove laws that are no longer relevant. In addition, the European Union (Withdrawal) Act 2019 makes provision for

782 Vol. 109 TMR borne in mind that the majority of intellectual property–related developments in the UK over the past three decades have had their origin in the EU legal framework.8 It is, of course, possible that the substantive laws of the UK could diverge from those of EU members in the post-Brexit era. However, bearing in mind the highly integrated relationship of UK and European intellectual property norms, EU decisions will likely continue to be of persuasive value and interest to UK judges, at least in the immediate future. In any event, the tensions in the case law and the general policy options for future reform efforts described in this article will be of relevance to decisions involving color trademarks in both the UK and in the EU generally.

Part II of this article provides a brief overview of the difficulties traditionally associated with the registration of colors as trademarks, and discusses the impact of recent developments, including the EU Trademark Reform Package, on the eligibility of color-based signs to function as indicators of trade origin. Part III provides an analysis of the leading UK and EU cases on color trademarks, and explains how the pervasive, yet unspoken, influence of the Sieckmann self-containment criterion has resulted in colors being denied registration by imposing an implicit requirement of spatial delimitation. In Part IV, this article canvasses some of the conceptual problems arising from the self-containment criterion, and the apparent semantic inconsistency between Sieckmann and Libertel. Part V discusses the major policy options available in clarifying the extent to which colors should be registrable as trademarks in light of the conflict between Sieckmann and Libertel. Part VI explores the extent to which the self-containment principle continues to (implicitly) guide the hand of the CJEU in its recent Louboutin judgment, arguably deducible from the more liberal attitude with which it assesses “hybrid” trademarks consisting of colors bounded by spatial contours or defined by specific positions on product surfaces. Finally, in the Conclusion, this article offers some closing thoughts on the future of color per se trademarks and the possible impact of Brexit on the trajectory of UK case law in the field of color-based trademarks.

extensions to the period relating to the UK’s withdrawal from the EU in connection with Article 50(3) of the Treaty on European Union.

8 See generally Catherine Seville, EU Intellectual Property Law and Policy, 2d ed. (Edward Elgar, 2016).

Vol. 109 TMR 783

II. SINGLE COLORS AS NONTRADITIONAL TRADEMARKS:

LIBERTEL, CADBURY, AND THEIR UNCERTAIN LEGACY

The question of whether single colors can be registered as trademarks has sparked a significant amount of controversy. Many international treaties and domestic trademark statutes are silent on whether single colors can be registered as trademarks,9 although the definition of “sign” in the context of trademark law is often broad enough to include colors as one or more of its elements.10 Yet, it is important to distinguish between a self-contained color-based trademark that provides an indication of how its elements are spatially distributed and a single-color trademark consisting solely of abstract, contourless color (that is, a single, undelimited color trademark whose spatial boundaries are not defined). The traditional view of single-color trademarks has been that they cannot be registered. Several reasons have been offered to support such a position: single colors on their own are not inherently distinctive; they are functional; they are merely decorative or descriptive; or they are not signs capable of adequately clear representation. It has also been suggested that there are only limited numbers of colors available for use in marketing, and allowing single colors to be registered would have anti-competitive effects by restricting the choices available to other traders in the marketplace (the “color depletion theory”).11 An additional 9 See, e.g., Article 15.1 of the Agreement on Trade-Related Aspects of Intellectual Property

Rights (TRIPS Agreement), which makes reference to “combinations of colours” as eligible subject matter for registration but is silent on whether a single color could also qualify for registration. The Paris Convention for the Protection of Industrial Property is silent on the issue of color, and Article 6 thereof provides that: “The conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation.” In the UK, Section 1(1) of the Trade Marks Act 1994 does not expressly mention color; in its definition of what a trademark may consist of, the following elements are listed: “words (including personal names), designs, letters, numerals or the shape of goods or their packaging.” Although the list is not meant to be exhaustive, it is interesting to note that color is not one of the elements expressly mentioned.

10 It is nevertheless noteworthy that the Recast Directive expressly includes colors in its definition of “signs.” See, Article 3 of the EU Trade Marks Directive 2015/2436, which includes colors as one of the elements that may qualify as signs eligible for registration. The first part of the Article reads: “A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds . . . . ” What is less clear from the wording of the Article, however, is whether a sign consisting of a single color and nothing else falls within the ambit of a viable trademark, bearing in mind particularly the qualifications set out in the second part of the Article (namely clauses 3(a) and (b)) relating to the capability to distinguish and clarity of representation.

11 See the U.S. case of Campbell Soup Co. v. Armour Co., 175 F.2d 795, 798 (3d Cir. 1949), in which the color depletion theory was discussed as a policy objection against registering trademarks consisting exclusively of color. See also NutraSweet Co. v. Stadt Corp., 917

784 Vol. 109 TMR argument raised against allowing single colors to be registered as trademarks is that consumers are not able to distinguish adequately between subtle differences in shade, rendering it difficult to determine whether a similar shade of color is confusingly similar for the purpose of trademark infringement (the “shade confusion theory”).12

However, since the turn of the millennium, legislative and jurisprudential developments in the field of trademark law, such as those in the UK, Australia, and the United States, appear to have rejected the traditional view.13 Under the more modern approach to colors as trademarks, single colors can be registered as long as they satisfy certain criteria.14 In rejecting the color depletion theory and the shade confusion theory, courts in the above jurisdictions are beginning to embrace the idea that single colors are, at least in principle, eligible candidates for registration as trademarks. The blanket prohibition on single-color trademarks, so fervently espoused by advocates of the color depletion theory,15 has been

F.2d 1024, 1028 (7th Cir. 1990). The color depletion theory has, however, been cast in doubt by subsequent case law and by scholars. See, e.g., Jani McCutcheon, How Many Colours in the Rainbow? The Registration of Colour Per Se under Australian Trade Mark Law, 26(1) E.I.P.R. 27, 31-32 (2004), which notes that the number of color variations distinguishable by the human eye exceeds ten million (citing supporting data at footnote 79). In this vein, McCutcheon suggests that even in a trademark regime that allows colors to be registered, there would be a vast range of other color options for traders to choose from.

12 It has been observed that consumer perceptions of color may vary depending on the viewing conditions. One factor relates to the different wavelengths of sunlight that occur throughout the day. These variations in ambient light can create difficulties for judging colour with the naked eye and may require the use of technical means. This creates a concern that trademark infringement actions may descend into disputes between litigating parties over the spectroscopic analysis of colors. Juanita J. Webber, Is the Green-Eyed Monster Sore or Can Color Really be Trademarked under the Lanham Act? Qualitex Co. v. Jacobson Products Co., Inc., 21 T. Marshall L. Rev. 425, 447 (1996).

13 See, e.g., Philmac Pty. Ltd. v. Registrar of Trade Marks, [2002] F.C.A. 1551, in which the Federal Court of Australia held that although the color terracotta was not inherently distinctive, it had become factually distinctive for the applicant’s irrigation pipe fittings under section 41(6) of the Australian Copyright Act, and so could be registered as a trademark. See also Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995), in which the U.S. Supreme Court held that the applicant’s unique “green gold” color, which had acquired secondary meaning, could be registered in relation to their SUN GLOW dry cleaning press pads. The U.S. Supreme Court opined, at 169 of the opinion, that the color depletion theory was merely relying on an occasional problem to justify a blanket prohibition and that the functionality doctrine would intervene to prevent color marks from being registered if specific colors were truly essential for trade in an identified industry.

14 A number of arguments have been raised to debunk the color depletion theory. One of these is the “functionality doctrine,” which plays an important role in preventing unfair competition by forcing popular colors back into the public domain, if ever there was depletion in a particular industry. See Arsha Hasan, Colour Blocking: How the Harmonization of Color Protection May Catalyze Color Depletion in Global Markets, 23 Ind. J. Global Legal Stud. 293, 301-302 (2016).

15 There continue to be vocal advocates for the color depletion theory. See, e.g., Glenda Labadie-Jackson, Through the Looking Hole of the Multi-Sensory Trademark Rainbow:

Vol. 109 TMR 785 treated with skepticism by courts favoring the more modern approach of recognizing colors as signs that can potentially satisfy trademark registration criteria.

Perhaps due in part to the attendant concerns attributed to the use of colors as trademarks, relatively few single colors are applied for as trademarks and even fewer make it to the trademark register, even in countries that allow, in principle, for such marks to be registered.16 Some notable and rare examples of well-known color trademarks that have been registered in the past include Veuve Clicquot’s orange color for alcoholic beverages17 and Kraft’s hybrid lilac/violet shade for MILKA chocolate18 in the EU, and Whiskas’ purple color for cat food in the UK.19 Interestingly, however, one example of a color-based trademark that was deemed unregistrable several years ago by the Court of Appeal of England and Wales (EWCA) is the shade of purple used on the product packaging of Cadbury chocolate bars. The decision in Cadbury20 is noteworthy for the light that it sheds on color-based trademarks and their registrability in the UK. Although the Cadbury case is already a few years old, it remains a seminal decision, and the reasoning provided by the court will likely have a significant impact on the extent to which single colors can be registered (or remain registered) in the UK in the foreseeable future.

Trademark Protection of Color Per Se across Jurisdictions: The United States, Spain and the European Union, 7 Rich. J. Global L. & Bus. 91, 108 (2008), arguing that although there are large numbers of colors, the average consumer can discern only a relatively narrow spectrum with the naked eye, and, just as importantly, not all colors are commercially viable or popular options. Further, consumers rarely have the opportunity to juxtapose two competing shades for the purpose of comparison and often have to rely on their memories when recalling specific colors used in marketing, leading to a concern that colors do not provide an optimal reference point, and creating a danger that newer entrants to a market might be at a disadvantage if colors were registrable as trademarks.

16 Although it is not uncommon for registered trademarks to contain colors, the overwhelming majority of such marks involve colors used in combination with other elements, such as shapes or text. A search on the UK Trade Marks Database at https://trademarks.ipo.gov.uk/ipo-tmtext for marks (both active and defunct) comprising colors in relation to a selected class (Class 2—paints, dyes, and inks) for the period January 1, 2007, and April 30, 2019, yielded a total of 763 results. Not surprisingly, the vast majority of these results correspond to trademarks consisting of colors that are either spatially delimited or used together with text, shapes, and figures. The observation that single colors are rarely, if ever, registered has also been made in the secondary literature dating back to more than a decade. See, e.g., Keltie R. Sim & Heather E. Tonner, Protecting Colour Marks in Canada, 94 TMR 761, 778 (2004), noting in the context of analyzing the law regarding color per se marks in Australia, the European Union, and the United States and its significance for reform efforts in Canada, that only the most deserving [single-color trademarks] are registered, and their numbers are few. In this vein, Sim and Tonner argue that lifting a blanket ban on single-color trademarks would not result in a flood of applications.

17 EUTM No. 747949. 18 EUTM No. 31336, in relation to a shade between Pantone numbers E 176-4 and E 176-3. 19 UK trademark Application No. 2346940, in relation to Pantone 248C. 20 Société des Produits Nestlé S.A. v. Cadbury UK Limited [2013] EWCA Civ 1174.

786 Vol. 109 TMR

Cadbury concerned an attempt by the well-known chocolate confectionery manufacturer to preserve the validity of its purple color-based trademark (against opposition proceedings by Nestlé), which had been accepted for registration in 2008 after evidence was adduced to demonstrate that the color trademark in question (Pantone 2685C) had acquired distinctiveness through use in respect of “chocolate for eating” in bar and tablet form.21 In following the decision by the CJEU in Libertel Groep BV v. Benelux-Merkenbureau,22 and in applying Article 2 of the Trade Marks Directive of 22 October 200823 and Section 1(1) of the UK Trade Marks Act 1994, the EWCA endorsed the general principle that there was no blanket prohibition against the registration of single colors.24 However, on the facts, the EWCA held that the mark for which Cadbury had applied failed to satisfy the criteria for registration laid down by the CJEU in Sieckmann. The EWCA explained that the color trademark applied for, which included a description that referred to a shade of purple covering the “predominant” surface of the product, was too vague and indeterminate, covering a multitude of different forms and appearances. As such, it did not qualify as a registrable sign under the Sieckmann criteria of “clarity, precision, self-containment, durability and objectivity,”25 which were prerequisites for registration.26

As one would expect, the principles of law applied by the EWCA in Cadbury are, formally speaking, consistent with the jurisprudence on color trademarks delivered by the CJEU in

21 It was noted that the acquired distinctiveness of the color was limited to Cadbury’s bar

and tablet chocolate products. The purple color in question had been used on Cadbury’s DAIRY MILK Chocolate since 1914. In relation to other chocolate products not in bar or tablet form, however, there was insufficient evidence to demonstrate acquired distinctiveness. Newer products such as CADBURY HEROS, CADBURY ROSES, CADBURY BUTTONS, and CADBURY TWIRL did not yet have a strong enough connection with Cadbury’s purple shade. Further, in some of the product lines, such as CADBURY ROSES, which was sold in a primarily light blue packaging, the use of the color purple was blurred by the presence of other colors and elements. See id. at para. 10 (i) to (v).

22 Case C-104/01 [2003] ECR I-3793, [2004] FSR 65. 23 2008/95/EC. 24 See Société des Produits Nestlé S.A. v. Cadbury UK Limited, [2013] EWCA Civ 1174 at

[14], subpara. (i), citing Libertel Groep BV v. Benelux-Merkenbureau, Case C-104/01 [2003] ECR 1-3793, that “a colour not spatially defined is capable of being registered as a trade mark, provided that it satisfies the three conditions of (i) being a sign, (ii) being capable of graphical representation, and (iii) being capable of distinguishing the goods or services of one undertaking from another.”

25 See Société des Produits Nestlé S.A. v. Cadbury UK Limited [2013] EWCA Civ 1174 at [55]. It is interesting that only five out of the seven Sieckmann criteria were expressly mentioned in this paragraph.

26 Id. at [50]-[51] and [55].

Vol. 109 TMR 787 Libertel and Heidelberger Bauchemie,27 both of which were cited by Sir John Mummery in his judgment. The general principle in Libertel in regard to the registrability of single-color trademarks has also since been adopted by the CJEU in the joined cases of Oberbank and Santander.28 Although the decision in Cadbury led to a factual finding that the purple color trademark as defined in the application was too indeterminate to be registrable, the court emphasized that a non-spatially defined color trademark could be capable of registration, provided it satisfies three criteria: that it constitute a sign, that it be capable of graphical representation, and that it be capable of distinguishing goods or services in the course of business. The EWCA’s endorsement of the “no blanket prohibition” against single-color trademarks in Cadbury is therefore broadly consonant with the general thrust of the European jurisprudence and regulations in this area.

On the subject of the graphical representation criterion referred to earlier, the year 2017 can be considered an important milestone in the history of European trademark law, as a result of amendments put in place earlier by the European Union trademark reform package. 2017 was the year in which the abolition of the graphical representation requirement for trademarks took effect on October 1. The abolition of the graphical representation requirement is one of the results of an in-depth assessment of the functioning of the European trademark system commissioned by the European Commission and conducted by the Max Planck Institute. The assessment, entitled Study on the Overall Functioning of the European Trade Mark System,29 indicates that the graphical representation requirement is, in the view of the vast majority of users consulted, obsolete and proposes that the law should be amended to allow for greater flexibility in the types of representation acceptable for nontraditional trademarks.30 Article 3 of the EU Trade Marks Directive31of 16 December 2015 now includes “colors” among the list of signs of which a trademark may consist. Further, this article has replaced the term “graphical 27 Case C-49/02 [2004] ECR I-6129. 28 Joined Cases C-217/13 and C-218/13, EU:C:2014:2012. In these joined cases, the CJEU

affirmed that single, contourless color trademarks must be assessed in the same manner as other nondistinctive trademarks, in relation to the issue of registrability and acquired distinctiveness through use. It is nevertheless noteworthy that the focus of this decision was more on the threshold to be applied for acquired distinctiveness in the context of consumer surveys, rather than on the issue of adequate graphical representation.

29 See Max Planck Institute, Study on the Overall Functioning of the European Trade Mark System (2011), https://publications.europa.eu/en/publication-detail/-/publication/5f878564-9b8d-4624-ba68-72531215967e.

30 See Onur Sahin, The Past, the Present and the Future of Colour and Smell Marks, 38(8) E.I.P.R. 504, 512 (2016).

31 Directive 2015/2436 of the European Parliament and of the Council, 16 December 2015, to approximate the laws of the Member States relating to trademarks.

788 Vol. 109 TMR representation” with the phrase “being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.” It has been suggested that the amendments would have the effect of overruling the CJEU’s decision in Sieckmann.32 However, it is noteworthy that recital 13 of the Preamble to the amended Trade Marks Directive expressly incorporates the seven Sieckmann criteria as essential requirements for trademark registration, in accordance with the recommendations of the study.33 The recital in question emphasizes that a registrable sign must be “capable of being represented in a manner that is clear, precise, self-contained, easily accessible, intelligible, durable and objective.” It goes on to state that a sign “should therefore be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation offers satisfactory guarantees to that effect.”34

Despite the change in wording to facilitate a seemingly “friendlier” regime for nontraditional signs, the seven Sieckmann criteria will continue to apply to all trademark registration applications under the revised Trade Marks Directive. In particular, a single color that is used in marketing must still be capable of “self-containment,” be clear and precise, and satisfy all the other elements. Although the permissibility of using nonvisual means would enhance the range of media by which a mark can be represented, the benefit of this relaxed requirement applies largely to nonvisual signs, such as sounds,35 rather than colors, since colors are invariably perceived visually by traders and consumers. The new standard of representation is also untested, and it is unclear how the revised provisions will be interpreted and applied by courts in accordance with the prevailing relevance and pertinence of the Sieckmann criteria. In this vein, it has been suggested that the 32 See Sahin, supra, at 513. 33 Id. at 512, noting that the study recommended a relaxation of the “representation”

requirement to allow for greater flexibility, while emphasizing that the change should not diminish the importance of the Sieckmann judgment, citing Max Planck Institute, Study on the Overall Functioning of the European Trade Mark System (2011), https://publications.europa.eu/en/publication-detail/-/publication/5f878564-9b8d-4624-ba68-72531215967e at 66, paras. 2 and 9

34 Id. 35 See Sahin, supra, at 513, where it is suggested in the context of the European trademark

reform package that nongraphical representation might be particularly preferable for certain types of marks, such as sound marks, so as to facilitate their more precise identification. However, Fields and Muller observe that it is often the distinctiveness requirement that proves to be more of a restriction for sound marks than graphical representation. See Désirée Fields & Alasdair Muller, Going against Tradition: The Effect of Eliminating the Requirement of Representing a Trade Mark Graphically on Applications for Non-traditional Trademarks, 39(4) E.I.P.R. 238, 239 (2017), citing Globo Comunicação e Participações S/A (Globo) v. EUIPO (T-408/15) EU:T:2016:468.

Vol. 109 TMR 789

uncertainties facing the application of the new representation standard might increase the complexity of trademark searches and examinations, and also result in litigation and disputes in the foreseeable future.36 Hence, although the representation requirement for trademarks has been relaxed, the practical effects of this development are likely to be limited for single-color trademarks.37 The current case law, such as Libertel, already recognizes a range of means through which color can be depicted, such as color codes and color samples in combination with descriptions, which are all necessarily visual given the way in which color is perceived by the human senses. It is therefore important to note that despite their permissive appearance cosmetically, the legislative changes to the European Trade Marks regime will likely effect little, if any, material change to the current status quo for the representation of color-based signs and commercial insignia.

Despite the ostensible shift from a categorical exclusion of single-color trademarks (under the traditional approach driven by the color depletion theory) to a more accommodating and permissive regime for color-based brands in the European context, the substantive legal position in the UK remains highly unsympathetic to color trademarks that are not spatially delimited. This situation is increasingly being recognized and acknowledged by commentators in the field of UK trademark law, and in EU trademark law more generally.38 The threshold for registration of colors has been set so high by the EWCA and the CJEU that single-color trademarks remain, practically speaking, outside the realm of registrability, even though there is no formal blanket prohibition against them.

36 See Taras Kulbaba, EU Trademark Law Reform Series: Implications for Nontraditional Marks, INTA (International Trademark Association) Bulletin, Feb. 15, 2016, Vol. 71, No. 3, para. 6, http://www.inta.org/INTABulletin/Pages/EU_TM_Reform_7103.aspx.

37 See Fields & Muller, supra, at 240, noting that: “Overall, the abolition of the graphical representation requirement does not appear likely to have a significant impact on colour marks.” Fields and Muller also note, at 238, that legal and practical considerations, such as the various hurdles enshrined in the absolute grounds for refusal of registration, will likely mean that there will not be a significant increase in the number of successful applications for nontraditional trademarks in general despite the relaxation of the representation requirement.

38 See Gabriele Engels, Jesse Hofhuis and Claire Lehr, “The Local Colour of Colour Marks” 11:8 J. Intell. Prop. L. & Prac. 628, 628, 633 (2016), noting that UK courts in the post-Cadbury era are mindful of not restricting the availability of colors and have interpreted the requirements narrowly to ensure that there is sufficient specificity, clarity, and precision in color trademarks, and observing decisions of the German Patent Court and German Federal Supreme Court are keeping brand owners and practitioners alike “on their toes.”

790 Vol. 109 TMR

III. “LAW IN THEORY” VS. “LAW IN PRACTICE”: ARE SINGLE-COLOR TRADEMARKS REALLY

REGISTRABLE IN THE UK AND EU? This section seeks to challenge the conventional assumption that

single-color trademarks are now registrable in the UK by uncovering an implicit requirement of spatial delimitation that is embedded in the pertinent jurisprudence. This implicit requirement, which is not openly acknowledged by courts and policymakers, will likely mean that there continues to be a de facto prohibition against the registration of single-color trademarks, even though there might not be a de jure exclusion. This implicit spatial delimitation requirement, which arguably stems from the third Sieckmann criterion of self-containment, generates uncomfortable tensions with the general rule in Libertel—tensions that are in critical need of resolution.

Although it is now increasingly accepted that single colors can be registered as trademarks if, among other things, they are sufficiently distinctive, the decisions in Cadbury and Libertel suggest that the mere capability of graphical representation is insufficient. Instead, these cases indicate implicitly that color, however distinctive, cannot, on its own, be registered unless the color is accompanied by some form of spatial outline or perimeter that imbues the sign with clarity, precision and self-containment. In distinguishing between the formal position (the “law in theory”) enshrined in the Libertel/Cadbury approach and the substantive position (the “law in practice”) arising from the practical effects of the case law, this article argues that a careful reading of the case law yields the observation that, practically speaking, single colors without spatial delimitation are not generally capable of registration despite formal pronouncements to the contrary. More importantly, this article suggests that while the seven Sieckmann criteria are sometimes referred to collectively, the somewhat ambiguous Sieckmann self-containment criterion, which rarely receives explicit attention from courts, implicitly drives the generally conservative judicial approach toward color trademarks in practice.

The case of Cadbury is a useful example of how a court discussed the seven Sieckmann criteria generally without discussing at length the specific impact of the self-containment criterion on registrability. In this case, the EWCA held that the applicant’s purple color trademark was unregistrable because it was not represented in a manner that satisfied the seven Sieckmann criteria of clarity, precision, self-containment, ease of access, intelligibility, durability, and objectivity.39 It is worth noting that lack of 39 Sieckmann v. Deutsche Patent –und Markenamt, Case C-273/00, [2002] ECR 1-11754 at

[55].

Vol. 109 TMR 791 distinctiveness was not an issue, since Cadbury had successfully adduced evidence to demonstrate that the shade of purple used on the packaging of their chocolate products in bar or tablet form had acquired distinctiveness. The decision by the EWCA therefore turned on whether the Cadbury purple color mark (which was factually distinctive for certain forms of chocolate) was depicted and described on the register in sufficiently clear, precise, and self-contained terms. The applicant’s description referred to the color purple “as applied to the whole visible surface” of the packaging of the goods, as well as an alternative—“or being the predominant color applied to the whole visible surface.” It was this alternative formulation that led to the rejection of Cadbury’s purple color trademark. Sir John Mummery seized upon the word “predominant” as being too vague, opening the door “to a multitude of different visual forms as a result of its implied reference to other colors and other visual material not displayed or described in the application and over which the color purple may predominate.”40 In his judgment, the mark as described did not constitute a sign that was graphically represented, as the description encompassed a multitude of signs “with different permutations, presentations and appearances,”41 rather than just a single color with certainty and precision.42 Since the description would include an uncertain number of signs and representations not discernible by the Registrar, allowing the registration would provide Cadbury with an unfair advantage over its competitors. Despite the persuasiveness of the holding by Sir John Mummery, it is not entirely clear when, if ever, a written description would satisfy the myriad tests for registrability. The EWCA did not formulate a clear, workable set of guidelines that would have fulfilled the Sieckmann criteria in the case of Cadbury’s signature purple color.

An important question arises at this juncture—would the representation of the color have been sufficiently clear if the second part of the description containing the word “predominant” had simply been omitted from the application? If so, it would appear that Cadbury’s attempt to maintain the validity of its trademark met with failure as an unfortunate result of infelicitous drafting, since the perceived defect related to the literal description, rather than to the specific shade of color. It remains speculative, however, whether the removal of the word “predominant” would have saved the application. It is unfortunately not very clear from the judgment what precise steps Cadbury could have taken to ensure that its

40 Société des Produits Nestlé S.A. v. Cadbury UK Limited, [2013] EWCA Civ 1174 at [50]. 41 Id. at [51]. 42 Id. at [50]-[51].

792 Vol. 109 TMR

purple color trademark would have been registered.43 Truncating the second (alternative) part of the description would essentially mean than the purple color would cover the entire visible surface of the packaging of the chocolate bars. Because the shape and dimensional limits of the packaging are known, requiring a stipulation that the color cover a clearly defined, predetermined area, such as the “whole visible surface” of the packaging, is a form of spatial delimitation, since the geometric perimeters of the color’s spatial reach have to be outlined in the description of the trademark. The question, though, is whether other alternatives might have been available to Cadbury short of covering the entirety of its chocolate wrappings with their characteristic purple color.

On the subject of alternatives, Sir Timothy Lloyd expressed the view in his concurring opinion that Cadbury could have satisfied the requisite certainty requirement by employing the phrase “more than 50% of the area of the visible surface” in lieu of the word “predominant.”44 In his judgment, the use of a percentage range would confer the certainty and precision needed to ensure the color trademark could be clearly and unequivocally represented, elements that were lacking in the applicant’s ambiguous formulation of “predominant” in the description.

However, it is not evident how “more than 50%” is any more certain or precise than “predominant.” In fact, one might argue that Sir Timothy Lloyd’s formulation is even more tenuous than the use of the word “predominant.” The Oxford English Dictionary defines “predominant” as “constituting the main, most abundant, or strongest element.” In a rarer form of use relating to historical contexts of heraldry and tinctures, the word is defined as “covering the entire surface of a coat of arms.”45 These definitions can be taken, in the context of product packaging, as referring to the vast majority of a given surface, encompassing almost every material portion of a defined space. In contrast, a color that covers just slightly more than half of a given surface (such as 50.1%) would appear to satisfy Sir Timothy Lloyd’s alternative formulation, while possibly falling short of what “predominant” coverage would require.46 It is therefore doubtful whether formulations that are based on a wide numerical range, such as that provided by Sir

43 It has been observed in this context that although the CJEU was willing to recognize that in some cases colors per se could factually function as a badge of origin, the CJEU gave no clue as to what circumstances would actually qualify for the standard required for registration. See Sahin, supra, at 508 and n.45.

44 Société des Produits Nestlé S.A. v. Cadbury UK Limited, [2013] EWCA Civ 1174 at [63]. 45 See Oxford English Dictionary, http://www.oed.com/view/Entry/149890?redirectedFrom

=predominant#eid, particularly paras. A1b and A2. 46 In his concurrence, Sir Timothy Lloyd acknowledged that other tests might be applied to

determine predominance in respect of colour on a product surface or packaging. See Société des Produits Nestlé S.A. v. Cadbury UK Limited, [2013] EWCA Civ 1174 at [63].

Vol. 109 TMR 793 Timothy Lloyd, are helpful in elucidating with precision what is required for a single-color trademark to satisfy the tests for registrability. To illustrate this point, the single-color sign applied for by Cadbury, along with the distribution of color on one of its bar chocolate products, are displayed in Figures 1 and 2, respectively.

In the subsequent case of Glaxo Wellcome v. Sandoz,47 the

validity of a trademark comprising not one but two shades of purple was considered. The case revolved around whether a mark consisting of dark purple applied to a “significant portion” of an asthma inhaler and light purple applied to the remaining portion was validly registered. There are interesting parallels between the concept of “predominant surface” in Cadbury and the notion of “significant portion” in Glaxo Wellcome. The EWCA once again applied its conservative stance toward the registration of color trademarks, noting that the sign in question was not limited to the

47 Glaxo Wellcome UK Ltd v. Sandoz Ltd, [2017] EWCA Civ 335.

Figure 1

Trademark applied for by Cadbury UK Limited (Application No. 2 376 879). The description of the mark was as follows: “The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.” (Source: Société des Produits Nestlé S.A. v. Cadbury UK Limited [2012] EWHC 2637)

Figure 2

Image showing the distribution of color on Cadbury’s “Dairy Milk Oreo” product. (Source: https://www.cadbury.co.uk/products) (last visited May 6, 2019)

794 Vol. 109 TMR colors as applied to any particular shape of inhaler.48 As such, it was difficult for the public to ascertain how the arrangement of dark and light purple could be applied to inhalers with different shapes and configurations.49 Kitchin LJ further emphasized that the verbal description of a color-based sign is important, and must be taken into account together with its pictorial representation, in a holistic assessment of whether the mark is valid or has been validly registered.50 In view of the uncertainties inherent in the depiction and description of the mark, members of the public would be left “scratching their heads” as to what the mark actually was.51 The EWCA therefore held that the Glaxo Wellcome mark failed to satisfy the criteria necessary for registration.

The EWCA in Cadbury and Glaxo Wellcome cited as authority the CJEU judgment in Libertel Groep BV v. Benelux-Merkenbureau,52 a case that originated from the Netherlands. Libertel concerned an attempt to register the color orange with respect to telecommunication goods and services.53 In Libertel, the CJEU accepted as a matter of law the principle that single colors could constitute signs capable of being represented graphically, but whether a single color could be registered as a trademark was a question of fact that had to be assessed on a case-by-case basis. It was noted in particular that “the competent authority for registering trademarks must carry out an examination by reference to the actual situation, taking account of all the circumstances of the case and in particular any use which has been made of the mark.”54 In addition, each color trademark would have to be evaluated for compatibility with the seven criteria laid down in Sieckmann. On the facts, the CJEU held that merely providing a color sample would not ordinarily be sufficient to withstand the test of time,55 nor would merely providing a description such as “orange” suffice for the purpose of registration, since the latter would not depict the desired mark with the requisite clarity and precision. However, the CJEU noted that the use of a color sample, a verbal description, and reference to an international color code, in

48 Id. at [77]. 49 Id. at [77], [80]. 50 Id. at [69]. 51 Id. at [80], citing Seven Towns Ltd v. OHIM, Case T-293/10 (General Court, June 14,

2012), which involved a representation of seven different colored blocks. 52 Libertel Groep BV v. Benelux-Merkenbureau, Case C-104/01 [2003] ECR I-3793. 53 Id. at [14]. 54 Id. at [77]. 55 Id. at [32]. The CJEU recognized, however, that there may be “certain media” that would

allow for a color to be reproduced in permanent form.

Vol. 109 TMR 795 combination, might together be sufficient to satisfy the Sieckmann criteria.56

It is worth noting that the Libertel judgment provides a set of conditions that are framed in conditional and speculative terms. The primary reason for which the applicant’s registration attempt failed appears to be that the orange color they were seeking to register was not defined with sufficient clarity and precision. Yet, as in the case of Cadbury, it is not entirely evident from the court’s judgment what concrete steps the applicant could have taken to ensure that its mark was in compliance with the Sieckmann criteria. What was perhaps lacking in Libertel’s orange color trademark was a spatial delimitation of how it was to be represented, and its distribution on the “marketing surfaces” of its intended products and services. The color, as it was presented in the application, consisted simply of an orange rectangle without specifying how the color would appear (in shape, coverage or contour) on the media or products that were to be presented to consumers in marketing and commerce.57 The applicant had, in the space for describing the trademark, simply inserted the word “orange” without reference to any color code.58 Although the CJEU affirmed the principle that single colors on their own are potentially registrable,59 the factual findings and decision in the Libertel case raise doubts about the registrability of single colors lacking cogent definitions of space, distribution, geometry, and dimensional configurations. In this regard, lack of evidence of distinctiveness may not have been the only obstacle barring Libertel’s orange shade from registration.

Shortly after the decision in Libertel, the CJEU had the opportunity to revisit the issue of representation of color trademarks in the case of Heidelberger Bauchemie.60 Although this case concerned an application to register not one but two colors—blue and yellow—in relation to various goods such as adhesives, solvents, and paints, the holding of the CJEU is nevertheless very instructive and revealing in elucidating the contours of legal protection afforded to color trademarks. In refusing the application, the CJEU held that a mere juxtaposition of two or more colors “in every conceivable form,” without any shape or contours, did not

56 This approach has also been adopted by the UK’s Intellectual Property Office, which had,

prior to Libertel, accepted color samples for the purpose of registration. Following Libertel, however, the “threshold” requirement has been raised, and samples on their own are no longer considered adequate graphical representations of single-color trademarks. See UK IPO, Libertel: Graphical Representation of Colour Marks Filing Requirements (October 2003) PAN 3/03, and UK IPO, Graphical Representation (May 2007) PAN 2/07.

57 Libertel Groep BV v. Benelux-Merkenbureau, Case C-104/01 [2003] ECR I-3793 at [15]. 58 Id. 59 Id. at [42]. 60 Case C-49/02 [2004] ECR I-6129.

796 Vol. 109 TMR exhibit the requisite precision, clarity, and uniformity necessary for registration. The CJEU emphasized that the mark depicted has to be “systemically arranged by associating the colors concerned in a predetermined and uniform way.”61 It can be discerned from the judgment, and its focus on clearly defined spatial distribution, that the requirement of uniformity in representation applies not only to single-color trademarks but also to combinations of more than one color.62

The case of Dyson v. Registrar of Trade Marks63 gave the CJEU the opportunity to further reinforce the conservative stance in relation to the representation of signs that it had adopted in its earlier decisions. In particular, the CJEU reaffirmed the three conditions that the trademark must satisfy: it must be a sign, it must be capable of (graphical) representation, and it must be capable of distinguishing.64 Dyson concerned an attempt to register a sign consisting of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner. The CJEU rejected this attempt, holding that the mark applied for encompassed a multitude of different shapes and configurations, and was too indeterminate to meet the criteria laid down in Libertel.65 It was also noted that the transparent appearance of the chamber was a property or a feature of the product, rather than a “sign.”66 Although there were arguably elements of functionality pertaining to the transparency of the container and elements of shape in this case that were not applicable to the cases of Libertel and Heidelberger Bauchemie, the CJEU’s decision in Dyson can be cited as authority for the general principle that a sign that manifests itself in a variety of shapes and forms is too indeterminate to function as a trademark. Again, this might be seen as the imposition of an implicit requirement that the spatial boundaries of a sign, as it is applied to a specific product surface, must be clearly indicated with a fairly high degree of precision.

Empirically speaking, the relatively small number of color-based trademarks whose validity has been upheld are spatially delimited, even if there might not be a “formal” requirement to do so in the EU.

61 Id. at [33] and [49]. 62 The holding in Heidelberger Bauchemie is consistent with the requirement in the UK

that the description explain the distribution on the product and in relation to each other, such as two colors, each comprising 50% of the product’s surface, with one on top of the other, constituting a striped whole. See UK IPO, Graphical Representation (May 2007) PAN 2/07, citing CTM No. 2177566.

63 Dyson v. Registrar of Trade Marks, Case C-321/03, [2007] ECR 1-687. 64 Id. at [28]. In respect of the graphical representation requirement, this pronouncement

was, of course, made before the EU trademark reform proposal to relax the graphical representation requirement for registration.

65 Id. at [37]. 66 Id. at [39].

Vol. 109 TMR 797 This observation might apply to the recent dispute in Christian Louboutin SAS v. Van Haren Schoenen BV,67 consisting of a reference to the CJEU from the Netherlands in relation to the use of the color red (Pantone 18 1663TP) applied to the soles of high-heeled shoes. The Hague District Court had earlier classified the Louboutin mark as a “position mark” designed to show the positioning of color with respect to the shape of the shoe, even though the contour of the shoe was not part of the mark. A position mark is defined as the “specific way in which the mark is placed or affixed on the product.” 68 Although the contour of the shoe was not part of the registration, it is indeed noteworthy that the spatial distribution of the color on a shoe sample was included as part of a pictorial representation in the trademark application to clearly demonstrate the color’s positioning with respect to the overall configuration of the product. This suggests that clearly representing, through pictorial or graphical means, the surfaces on which the color is applied could serve as an integral feature of a viable color-based trademark for the purpose of registration, even though the spatial boundaries or contours themselves may not constitute the key element of what is protected under the circumstances. It is perhaps not insignificant that Louboutin’s “spatially delimited” color trademark has been successfully registered in numerous countries, including France, Germany, Belgium, the Netherlands, China, India, and Australia.69 Although the mark was recently rejected in Switzerland (which is not an EU member state), the grounds for rejection were related to the lack of acquired distinctiveness in the Swiss context, and not to indeterminacy of representation.70 In the ensuing paragraph, interesting parallels will be drawn between the Advocate General’s first opinion in Louboutin and the UK Cadbury case. The Advocate General’s second opinion in the Louboutin case, which was delivered on February 6, 2018, and the CJEU’s judgment of June 12, 2018,

67 Case C-163/16. 68 See, e.g., Article 3(3)(d) of the Commission Implementing Regulation (EU) 2017/1431 of

18 May 2017 laying down detailed rules for implementing certain provisions of Council Regulation (EC) No. 207/2009 on the European Union trade mark, which after May 13, 2018, is no longer in effect (hereinafter “Implementing Regulation 2017/1431”).

69 See Sylvia Polydor & Birgit Clark, Swiss Supreme Court: No Trade Mark Protection for Christian Louboutin’s Signature Red-soled High Heels 12:7 J. Intell. Prop. L. & Prac. 539 (2017).

70 See Christian Louboutin v. IGE, Case 4A 363/2016, Swiss Supreme Court (Bundesgericht) of February 2017, which upheld the rejection of Louboutin’s “red sole” position trademark in Switzerland for high-heeled shoes. The basis for rejection was the lack of distinctiveness in Switzerland and not indeterminacy of representation. In the view of the court, the monochromatic red sole was seen, in Switzerland, as a common element of decoration or style, and not as an indicator of trade origin. It should also be pointed out that as Switzerland is not a member of the EU, it is not bound by Louboutin’s EU trademark, as noted in Polydor and Clark, supra, at 540.

798 Vol. 109 TMR will be discussed in greater detail in the penultimate section of this article.

Advocate General Szpunar noted in his first opinion in the Dutch Louboutin case that in relation to the representation of the mark “the colour is applied to the entirety of the sole, whatever its precise contours may be.”71 In a way that might be reminiscent of the earlier analysis relating to the Cadbury case, the Louboutin formulation (to the “entirety” of the sole) could be perceived as a form of spatial delimitation, even though a specific numerical figure (e.g., 100% of the surface) is not employed. It should be borne in mind that the primary issue for reference in the Advocate General’s opinion was whether the concept of “shape” was limited to three-dimensional features such as contours, measurements, and volume, or whether it included color, and not whether the color in question was adequately represented. The fact that the validity of Louboutin’s color-based mark was upheld in the Netherlands, however, suggests that clear pictorial representation of the color’s spatial distribution on the product could have played a role in its registrability, implicitly or otherwise. Louboutin’s red sole trademark is depicted in Figure 3.

Interestingly, the underlying influence of spatial delimitation can also be discerned in the decision of the Court of Appeal of Northern Ireland in BP Amoco Plc v. John Kelly Ltd.72 Before the case reached the Court of Appeal, the High Court of Northern Ireland had held that British Petroleum’s (BP) green color

71 Case C-163/16, ECLI:EU:C:2018:423 at para. 40. 72 BP Amoco Plc v. John Kelly Ltd., [2001] N.I. 25 (CA (NI)).

Figure 3 Louboutin’s registered color trademark (Benelux trademark No. 0874489) in Class 25, namely “footwear (other than orthopaedic footwear).”

Vol. 109 TMR 799 trademark was valid, but not infringed. It went on to explain that what made the color trademark registrable was the specific way in which it was applied to the filling station displays and surfaces, but not the shade itself. However, the Court of Appeal of Northern Ireland disagreed with the lower court’s narrow interpretation of validity. In finding that BP’s trademark was both valid and infringed by the defendants Tedcastle Oil, Carswell LCJ held that the representation in BP’s application showing how the color green was to be applied to the surfaces of filling stations was merely a “vehicle” of depiction, and the protection conferred by registration was not confined to the exact model of station shown in the pictures.

Despite the different holdings by the High Court and the Court of Appeal of Northern Ireland in the BP Amoco case, it is submitted that the spatial delimitation criterion can be perceived at both levels of the court decision—expressly in the former and impliedly in the latter. Although the Court of Appeal did not refer explicitly to a spatial distribution requirement, it should be emphasized that BP had included in its trademark application pictorial representations (colored line drawings) of the “surfaces” to be colored green. BP also indicated in its description of the mark that the color green was to be applied to the exterior surface of the premises used for the supply of services, and included heraldic shading to exemplify how the color would appear in the accompanying representation. BP’s trademark application further clarified that the registration gave no right to the exclusive use of the color green as applied to pump nozzles and hoses for delivery of unleaded petrol.

While the Northern Ireland Court of Appeal’s judgment appears, at face value, to adopt a more sympathetic approach to BP’s color trademark, it ought to be borne in mind that the representation of BP’s green color trademark was significantly different from those of Libertel’s orange color trademark and Cadbury’s purple color trademark. The most glaring difference is that Libertel and Cadbury both used single colors in their visual depictions, accompanied by insufficiently precise descriptions. In contrast, BP’s green mark was not “monolithically unmarked,” but consisted of a color-based pictorial representation, with accompanying heraldic shading, filling out predefined portions of designated surfaces on petrol filling stations. The Court of Appeal’s ruling that protection was not confined to the exact model of station is not surprising, since trademark law protects a registered proprietor not only against identical use, but also against confusingly similar variants. Though the court did not expressly say so, the fact that BP’s green color trademark was spatially delimited with clarity is arguably one of the important justifications for the court’s eventual finding of validity and infringement.

From the cases discussed above, an argument can be made that the requirement of spatial delimitation is embedded, de facto if not

800 Vol. 109 TMR de jure, in the case law,73 and an important factor driving this phenomenon could be the impact of the self-containment criterion on the registrability of single colors. This criterion is emphasized in the opinions by Advocate General Léger in a number of the CJEU cases—that non-spatially delimited colors (with no shape or outline) cannot be registered.74 This is essentially a recognition that single, unmarked colors are important building blocks of visual communication in advertising, and that conferring property rights in colors per se might have a chilling effect on commercial expression. Although the CJEU has rebuffed the Advocate General’s efforts on more than one occasion, are the factual findings in the recent cases not an endorsement of Léger’s views in substance if not in form? If applied to the practical registrability of color, spatial delimitation might, for all intents and purposes, be a manifestation of the Sieckmann self-containment criterion. Table 1 provides an outline of the key holdings of the cases discussed in this section.

73 There are a number of interesting cases in Germany that appear to have endorsed the

principle that single, contourless colors can be registered, subject to proof of distinctiveness. See, e.g., Nivea-Blau (Federal Supreme Court of Germany, decision of July 9, 2015, Case I ZB 65/13) and Sparkassen-Rot judgment of the German Federal Court of Justice (Bundesgerichtshof) of July 21, 2016, I ZB 52/16. While these cases can potentially be construed as adopting a somewhat more “faithful” interpretation of the formal principles articulated in Libertel concerning the registrability of color, they do illustrate that demonstrating acquired distinctiveness through consumer survey results is often a very difficult and challenging process. It should also be noted that these cases focused on the level of recognition required for a color to be registrable, and not primarily on the issue of (graphical) representation. Although a detailed discussion of these cases is outside the scope of this article, an important question that nevertheless still needs to be considered is how the Sieckmann “self-containment” criterion can be accommodated in a regime that recognizes non-spatially defined color as registrable subject matter.

74 See Libertel Groep BV v. Benelux-Merkenbureau, Case C-104/01 [2003] ECR 1-3793 at [23], where Advocate General Léger opined that certain economic markers—such as single colors—should not be the subject of monopoly and should be available to everyone.

Vol. 109 TMR 801

TABLE 1: SUMMARY OF HOLDINGS IN SELECTED CASES

ON COLOR TRADEMARKS

Name of Applicant(s) Court

Color Applied for

Was the color-based

mark registrable?

Summary of facts or holding

Libertel CJEU Orange No Lack of adequate graphical representation of the color; no reference to any international color code.

Heidelberger Bauchemie

CJEU Blue and Yellow

No Lack of satisfactory information concerning spatial distribution of the two colors on product or marketing surfaces.

Dyson CJEU Transparent appearance of a collection chamber for a vacuum cleaner

No Proposed mark could take on a multitude of different appearances and was too general, abstract, and lacking in specificity.

Cadbury EWCA Purple No Use of the word “predominant” in the description deemed too indeterminate.

802 Vol. 109 TMR

Name of Applicant(s) Court

Color Applied for

Was the color-based

mark registrable?

Summary of facts or holding

Glaxo Wellcome

EWCA Dark Purple and Light Purple

No Distribution of the two shades of purple deemed too indeterminate and not represented with sufficient clarity. The applicants’ “inhaler” product, including its spiky perimeter, could take a number of different shapes and forms.

British Petroleum (BP)

Court of Appeal of Northern Ireland

Green Yes The mark was clearly depicted in pictorial representations, and the color in question had become distinctive of the applicant’s filling stations.

Vol. 109 TMR 803

IV. RECONCILING THE TENSION BETWEEN LIBERTEL / CADBURY AND SIECKMANN:

CHARTING THE FUTURE TRAJECTORY OF THE UK APPROACH TO SINGLE-COLOR TRADEMARKS

In view of the arguments presented in the preceding section, it is apposite at this point to return to the key question that animates this article: are single-color trademarks registrable, and if so, what explanation can be provided for the somewhat dismal prognosis for such marks offered by cases such as Libertel, Heidelberger Bauchemie, and Cadbury?

The analysis in the preceding section suggests that there is a schism between the “law in theory” and the “law in practice” where the registration of single-color trademarks is concerned. Formally speaking, the legislation and case law indicate that there is no blanket prohibition against the registration of single-color trademarks. Practically speaking, however, the vast majority of the courts in the cases surveyed have found some way of rejecting single-color trademarks, usually on grounds of lack of clarity. This article offers another possible reason that informs (implicitly or otherwise) the UK and CJEU approaches to color trademarks lacking in spatial dimensions.

Clarity and precision (or the lack thereof) are the Sieckmann criteria that are most frequently cited by judges in rejecting color trademarks for registration. Interestingly, of the seven Sieckmann criteria, relatively little attention has been paid in the jurisprudence to the third criterion—that of “self-containment.”75 Yet the self-containment criterion that forms such a fundamental part of the Sieckmann matrix may very well have a significant impact on the color trademarks that can function as viable indicia of origin. It might perhaps be the case that the courts had sufficient grounds to reject the color trademarks based on clarity and precision alone,76 but the lack of concrete guidance on the specific threshold that the mark needs to surmount—particularly in the case of a clearly defined and indeed highly recognizable shade like “Cadbury 75 It is interesting to note that self-containment is sometimes not expressly mentioned by

judges when referring to the Sieckmann criteria for registration. See, e.g., Glaxo Wellcome UK Ltd v. Sandoz Ltd [2017] EWCA Civ 335 at [80], in which Kitchin LJ held that the mark consisting of two shades of purple had been invalidly registered, on the basis that it lacked the “clarity, intelligibility, precision, specificity and accessibility that the law demands.” Self-containment is one of the two Sieckmann criteria not specifically listed by Kitchin LJ in the above paragraph, although it could very well have been the case that Kitchin LJ was merely emphasizing the requirements that he thought were most relevant to the case at hand.

76 It is noteworthy that the EWCA held that the trademark applied for by Cadbury lacked “the required clarity, precision, self-containment, durability and objectivity to qualify for registration.” See Société des Produits Nestlé S.A. v. Cadbury UK Limited, [2013] EWCA Civ 1174 at [55]. However, there is relatively discussion of the self-containment criterion in the judgment.

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purple”—mandate a closer and fuller exploration of the third criterion, that of self-containment.

Put simply, a color trademark that is self-contained should, by definition, be spatially delimited. A single color in the abstract, such as orange or green without any spatial boundary, is an element that forms a part of the visible electromagnetic spectrum, and is arguably beyond the scope of what is registrable under the third Sieckmann criterion. The fact that Libertel allows, formally speaking, for single-color trademarks to be registered generates an uncomfortable tension with the Sieckmann case. According to the Oxford English Dictionary, “self-contained” means “having all that one . . . needs in oneself . . .; independent of external means or relations . . .”, or, in the context of a device, “complete in itself.”77 The strong notion of independence that pervades the concept of self-containment mandates the presence of defined boundaries that are inherent to the sign being depicted on any trademark application form that is subject to a Sieckmann-type examination. The requirement that such a sign be complete in itself suggests that it must convey an exhaustive impression of how it is to be presented to the consumer and used in commerce, without having to rely on “external means or relations.”

Commentators who see no tension between Sieckmann and Libertel might argue that self-containment is a requirement that applies to the depiction of the mark on the register rather than to the color itself. The essence of this distinction is that the representation of the mark, through the use of a color code, a color sample, a verbal description, and possibly other means, must be complete in itself, but its actual manifestation on product surfaces can vary in shape and form. However, it is submitted that such a distinction is artificial and untenable. This is because it raises uncertainties about whether the mark in the application corresponds to (or provides an accurate depiction of) how the mark is to be used in commerce and marketing—the very concerns surrounding the vagaries of how the Cadbury purple mark was presented. For instance, if the color purple is depicted as a patch of color completely filling out the prescribed space on the application form, whereas the color in practice is applied to a variety of shapes and sizes, the representation on the form (as “contained” within the shape of the permitted field for representation) would not be an exhaustive or accurate rendition of how the color is in fact applied to product or advertising surfaces.

Factually speaking, the situation described in the above paragraph would not be much different from a Cadbury-type scenario involving a “predominant” color—where the sign applied

77 See Oxford English Dictionary, http://www.oed.com/view/Entry/175168?redirectedFrom= self-contained#eid.

Vol. 109 TMR 805 for potentially manifests itself in such a multitude of permutations that the subject matter of protection cannot be satisfactorily ascertained. For the sake of consistency, self-containment should therefore be construed as relating to the representation of the sign applied for and used as a trademark on product surfaces, and not simply to the abstract depiction of the mark as a patch of color in the prescribed “box” of the application form for registration. This interpretation of self-containment is also consistent with the submissions put forward by the UK government in the Sieckmann case, namely, that the representation must stand in place of the sign being used in commerce.78 That being said, a validly registered color-based mark would still be protected from confusingly similar variants—a rival trader does not necessarily have to apply the protected color trademark to product surfaces in exactly the same way in order to be found liable for infringement, as long as a likelihood of confusion can be demonstrated by the mark holder.

A further point worth highlighting in the Sieckmann decision is that in defining what constitutes adequate representation for trademarks on the register, strong emphasis is placed on the use of “images, lines or characters.”79 Although the graphical representation requirement is to be significantly relaxed in the EU trademark reform package, colors are visually perceptible signs, and, as such, will necessarily have to rely on visual cues, such as “images, lines or characters,” for their depiction and description.

An “image” is a pictorial representation containing elements that can be visually identified, such as shapes, outlines, symbols, objects, and contours. In one of the definitions of “image” provided by the Oxford English Dictionary, reference is made to a “delineated” imitation in solid form.80 In another, “image” is defined as a “visual representation or counterpart of an object or scene . . . .”81 An abstract representation of a single “unbounded” color, accompanied by nothing else, is not, strictly speaking, compatible with the dictionary sense of a delineated “image” (depicting an object) that is suggested in the Sieckmann judgment. If one accepts the dictionary meaning of “image,” one refers 78 See Sieckmann v. Deutsche Patent –und Markenamt, Case C-273/00 [2002], ECR 1-

11754 at [31]. 79 Id. at [55], where it is noted that a “trade mark may consist of a sign which is not in itself

capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”

80 See Oxford English Dictionary, http://www.oed.com/view/Entry/91618?rskey=Xn2Yxh&result=1#eid at definitions 1a and 1b.

81 Id. at definition 3a. This definition of “image” is also compatible with that provided by the Merriam Webster Dictionary, which reads as follows: “a visual representation of something: such as (1): a likeness of an object produced on a photographic material [or] (2): a picture produced on an electronic display (such as a television or computer screen).” See Merriam Webster Dictionary, https://www.merriam-webster.com/dictionary/image.

806 Vol. 109 TMR principally to a depiction of objects and/or shapes that can be filled with color or an assortment of different colors. For example, under this definition, a color that is depicted as covering the entire surface of a triangular or rectangular chocolate bar, or an elliptically shaped medicinal capsule, could be considered delineated “images,” but a single color without boundaries would not. The tools used for representation of a trademark, taken in conjunction with the self-containment requirement, furnish very strong support for the proposition that spatial delimitation is a necessary component of a viable color trademark. Notwithstanding the de jure position, these considerations militate against the registration of colors without defined boundaries, and could have played an important, albeit implicit, role in influencing the courts’ decisions in Libertel, Heidelberger Bauchemie, and Cadbury.

V. POLICY IMPLICATIONS OF A SPATIAL DELIMITATION REQUIREMENT: SHOULD SINGLE-COLOR TRADEMARKS

BE REGISTRABLE? The preceding sections have argued that there is an inherent

requirement of spatial delimitation for color trademarks in the trademark jurisprudence of the UK even if that requirement is not expressly acknowledged. There are at least two policy options where the future of color-based trademarks is concerned. Each of these options would require a careful consideration of the tension between Libertel and Sieckmann. If a color is to be registrable under the Sieckmann tests, it would necessarily have to be clear, precise and self-contained, among other requirements. Having to satisfy Sieckmann “self-containment” would be inconsistent with the general rule in Libertel—that color trademarks do not necessarily have to be limited spatially. In light of this tension, the first option would be to carve out a special exemption from the Sieckmann self-containment criterion and make the self-containment principle inapplicable to single-color trademarks. The second option, which this article argues is the more viable of the two, is to explicitly recognize a spatial delimitation requirement for color-based trademarks, in line with the practical impact of the rule in Cadbury. These two options will be considered in turn.

In relation to the first option, any attempt to preserve the status quo, and to maintain the rule that single colors without spatial delimitation can be registered, would necessarily involve clarifying which of the Sieckmann criteria would continue to be applicable in the context of color trademarks. In Cadbury, the EWCA appeared to endorse without qualification all seven Sieckmann criteria.82 In 82 See Société des Produits Nestlé S.A. v. Cadbury UK Limited [2012] EWHC 2637 (Ch)

[14]-[15] (referring to the seven criteria specified in Sieckmann v. Deutsche Patent –und

Vol. 109 TMR 807 practice, however, a single-color trademark that appears to satisfy the formal specifications in Libertel might encounter difficulty in fulfilling at least some of the Sieckmann criteria. The most problematic would arguably be the self-containment criterion, since a single color on its own, without outlines or shapes in its depiction, would be devoid of any sense of spatial distribution. Other criteria, such as ease of access,83 intelligibility, and objectivity might also create difficulties, since a single color without form or shape might not be communicated, shared, perceived, or recognized by consumers with the same degree of accuracy and consistency as an image or picture bearing distinct figures, contours, shapes, and outlines. These concerns might also explain why businesses often encounter difficulty in court when attempting to adduce evidence of consumer recognition through surveys containing color samples that do not exactly match the subject matter (a single color) that they are seeking to register.84

It might be possible to ameliorate the tensions identified above pertaining to spatial delimitation by creating a special exception to the Sieckmann criteria for color trademarks. Instead of holding that all seven Sieckmann criteria apply unreservedly to color trademarks, policymakers and courts might consider carving out a special exemption for distinctive signs that consist exclusively of a single color. Exempting colors from the self-containment criterion might appear, at least at face value, to resolve the conflict between Libertel/Cadbury and Sieckmann.

It is submitted, however, that this first option does not resolve the underlying paradoxical problems facing the fundamental uncertainty of depicting single colors without boundaries. It merely delays the inevitable question of what constitutes viable representation and seeks to superficially harmonize Sieckmann with Libertel by selectively suspending the operation of “problematic” criteria for certain types of marks. This first option also runs the risk of generating unnecessary complexity by carving out a myriad of different requirements for different types of marks, leading to confusion and uncertainty for traders seeking a reliable set of guidelines to facilitate their brand development and marketing efforts.

Markenamt, Case C-273/00, [2002] ECR 1-11754 at [55].). It has also been observed that the CJEU has accepted, without qualification, the application of the Sieckmann criteria to cases involving color marks, such as Libertel.

83 It has been suggested, for instance, that international color codes or international color charts, while recognized in Libertel as one of the ways in which color can potentially be represented in an application, may not be accessible to members of the public or to relevant consumers. See Sahin, supra, at 507.

84 See, e.g., Nivea-Blau (Federal Supreme Court of Germany, decision of July 9, 2015, Case I ZB 65/13).

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A more viable option would be to explicitly acknowledge the inherent concerns that are bubbling beneath the surface in the Libertel, Heidelberger Bauchemie, and Cadbury judgments and to recognize that registration of color without boundaries is difficult to justify or to administer in practice. Pursuant to this second option, imposing an explicit spatial delimitation requirement for color trademarks would bring the formal, de jure, position in line with the substantive de facto results observed in the case law.

Those advocating in favor of allowing the registration of single-color trademarks might argue that imposing a spatial delimitation requirement would restrict the scope of such marks and place onerous burdens on trademark applicants. In this connection, setting the threshold of registration too high might deprive traders and merchants of their legitimate expectations in respect of their color-based brands pursuant to the formal legal position under Libertel/Cadbury. It would erode the traders’ distinctive brand identity in their color-based commercial insignia, so painstakingly built up through the years, by allowing junior users to freeride on their highly prized identity in commerce and marketing.

Despite the persuasiveness of the rhetoric in favor of preserving the registrability of single-color trademarks, there are important evidentiary and normative reasons against allowing colors without defined boundaries to be registered as trademarks. From an evidentiary perspective, it is untrue to say that adding a spatial delimitation requirement would impose an onerous new burden on trademark applicants. In contrast, expressly requiring color-based marks to be confined to geometric boundaries or shapes would correspond directly to the level of material protection that traders would receive, de facto, under the current conservative interpretive matrix of Libertel/Cadbury. The revised rule would merely articulate in express form an unwritten standard that is already present in the jurisprudence. Such a reform strategy would also perform an important notice function by communicating more transparently to prospective trademark applicants the demands and challenges of developing a brand portfolio consisting of, or including, colors. Although currently registered single-color trademarks would be subject to challenge under the revised rule, introducing an explicit spatial delimitation requirement would play an important role in clarifying the registration requirements to be satisfied, enhancing the level of certainty and predictability with which traders can plan and design their trademark applications in the future.

Further, an explicit spatial delimitation requirement would allow trademarks in general to be assessed in accordance with a common set of criteria, leading to more fair and transparent examination of signs that are put forward for registration. The larger, more holistic goal of this shift in trademark doctrine would

Vol. 109 TMR 809 be to foster the development of a more stable and internally coherent trademark examination regime, which promotes equitable competition and trade in the modern market economy.

Of course, it might also be argued that Cadbury was wrongly decided and that the EWCA’s reversal of the High Court’s decision was merely an aberration in the case law, driven by an uncharitable interpretation of the word “predominant.” In this vein, another way of resolving the tension between Cadbury and Sieckmann would be for future courts to uphold the rule in Libertel and to depart from the EWCA’s opinion in Cadbury. Nevertheless, it is submitted that the implicit requirement of spatial delimitation is not isolated to the EWCA’s judgment in Cadbury, but can be discerned from the jurisprudence of the CJEU itself. This implicit requirement of spatial limitation for colors in the Libertel-Heidelberger Bauchemie-Cadbury matrix is consistent with the larger goal of promoting balance in trademark law.

A balanced approach to trademark examination would seek to facilitate an equitable apportionment of burdens and benefits between merchants, rivals in commerce, and the consuming public. On the one hand, a balanced approach would allow traders who have invested considerable amounts of time and expense in developing a color-based brand to obtain an appropriate degree of market exclusivity through registration. On the other hand, requiring the boundaries of color trademarks to be expressly indicated would also ensure that the public interest is not compromised, by placing reasonable limits on the scope of registrable subject matter.85 Acknowledging a spatial delimitation requirement for registration would help to reinforce the concept that colors, as one of the fundamental building blocks of visual communication, should not generally be subject to monopoly control, save in the most exceptional of circumstances. Color-based brands that are not registrable under the rule in Cadbury, such as colors covering a “predominant” surface, can still be protected under the common law tort of passing off, but the trader seeking protection would have to satisfy the additional evidentiary burdens of demonstrating goodwill in the color-based mark, in addition to misrepresentation and damage.86 Misrepresentation is a particularly challenging

85 The general theme of balance is also emphasized by the CJEU in its judgment in Levi

Strauss & Co. v. Casucci SpA, Case C-145/05, at para. 30: “It follows that the protection of rights that the proprietor of a trade mark derives under the directive in question is not unconditional, since in order to maintain the balance between those interests that protection is limited in particular to those cases in which the proprietor shows himself to be sufficiently vigilant by opposing the use of signs by other operators likely to infringe his mark.”

86 The three elements that are needed to succeed in an action for passing off are sometimes referred to collectively as the “classic trinity.” See Reckitt & Colman v. Borden, [1990] 1 WLR 491 (also known as the “Jif” Lemon case), where Lord Oliver condensed the requirements laid down in Erven Warnink BV v. Townend (J.) & Sons, [1979] AC 731

810 Vol. 109 TMR criterion to satisfy in a passing off action, bearing in mind that color does not usually appear on its own, but is often represented alongside other brand elements on product packaging.87 The additional burden of proof associated with the passing off action plays an important role in mediating the balance of power between traders and their rivals in commerce: the lack of a presumption of validity in the case of an unregistered single-color trademark would mean that competitors are generally free to exploit that color in marketing and commerce unless it can be shown, under the requirements of the common law, that the use of the color generates a risk of unfair competition.88 These specific restrictions and allocation of evidentiary burdens are essential in erecting safeguards to constrain competition within the bounds of fairness and to prevent anti-competitive or abusive trade practices with respect to the commercial use of color-based brands.

Statistically speaking, the number of applications for single-color trademarks is relatively low in comparison to other more traditional marks, and the numbers are perhaps a reflection of the difficulties facing the development of single colors as exclusive marketing symbols. According to statistics available on the European Union Intellectual Property Office (EUIPO)89 Trade Marks database on April 30, 2019, only 278 out of 1,170,530 registered EU trademarks consisted of color-based signs.90 Further, in addition to the 278 registered color trademarks, the EUIPO database indicated that 393 applications for color trademarks were refused, 185 were withdrawn, and 60 had expired.91 It should be borne in mind, however, that the figure for registered color trademarks cited above includes signs that consist of more than one

(also known as the “Advocaat” case), to the three elements of goodwill, misrepresentation, and damage.

87 See Julius Stobbs & Savan Bains, What Now for UK Colour Trademark Law?, Intell. Prop. Mag. 34, 35 (Dec. 2013/Jan. 2014).

88 See, e.g., Cadbury Schweppes Pty. v. Pub Squash Co. [1981] 1 WLR 193, in which the claimant failed to demonstrate that consumers exclusively associated the color yellow or the masculine theme used in advertising with their line of lemon squash called “Solo” sold in yellow containers resembling beer cans. Lord Scarman emphasized in the judgment that it was important not to stifle competition. There was insufficient evidence to show that the public had been misled or deceived by the similar use of color and advertising themes on competing products.

89 The European Union Intellectual Property Office (EUIPO) was formerly known as the “Office for Harmonization in the Internal Market” (OHIM).

90 See the EUIPO e-Search plus database, https://euipo.europa.eu/eSearch/#advanced/ trademarks/1/100/n1=MarkCurrentStatusCode&v1=%22Registered%22&o1=AND&n2=MarkCurrentStatusCode&v2=%22Registered%22&o2=AND&sf=ApplicationNumber&so=asc, last visited Aug. 12, 2019.

91 See the EUIPO e-Search plus database, https://euipo.europa.eu/eSearch/#advanced/ trademarks/1/100/n1=MarkFeature&v1=Colour&o1=AND&sf=ApplicationNumber&so=asc, last visited Aug. 12, 2019.

Vol. 109 TMR 811 color, as well as signs that consist of colors and other figurative elements, such as contours, curves, outlines, and imaginative fonts.

Not surprisingly, the vast majority of the 278 color trademarks successfully registered by EUIPO consists of spatially delimited colors combined with other elements.92 The dearth of successfully registered single-color trademarks, coupled with the relatively high rejection and withdrawal rate for color-based signs, indicate that brand owners will continue to face an uphill battle in securing legal protection for the use of colors in marketing. Some of the single-color trademarks that are currently in force are not dissimilar in appearance and distribution to the rejected purple color trademark in the Cadbury dispute. In light of the conservative approach adopted in cases such as Libertel, the relatively small number of single-color trademarks that are currently on the register are vulnerable to challenge and possible invalidation. Until the tension between Libertel and the Sieckmann self-containment principle is addressed, single-color trademarks that are not “self-contained” are in a highly precarious position, and are at risk of being attacked by competitors seeking to use similar shades in merchandising.

VI. ON THE INTERSECTION OF COLOR, SHAPE, AND POSITION TRADEMARKS:

A CLOSER LOOK AT HYBRIDIZATION AND ITS IMPACT ON REGISTRABILITY

While spatially delimiting a color-based mark might enhance the sign’s compatibility with the Sieckmann self-containment criterion, traders should be aware that hybrid marks consisting not only of color, but of shapes, positions, and three-dimensional configurations may be subject to other restrictions not relating specifically to color. These restrictions may impose further barriers to successful registration.

One of the primary challenges facing nondistinctive shapes is that they might lack sufficient distinguishing power to function as badges of origin in the eyes of consumers. In applying what has become known as the “test of significant departure,” courts in the EU and UK often consider whether a shape mark departs significantly from the norms or customs of a sector in order to fulfil its essential “origin” function.93 Under this test, the shape and 92 An example of a single-color trademark that has been successfully registered by EUIPO

is a trademark held by Kraft Foods Schweiz Holding GmbH for a single shade of lilac in relation to Class 30 (EUIPO Trademark number 000031336). This lilac purple color trademark is used on a range of MILKA chocolate products. See the EUIPO e-Search plus database, online at: https://www.euipo.europa.eu/eSearch/#advanced/trademarks/1/100/n1=ApplicationNumber&v1=000031336&o1=AND&c1=CONTAINS&sf=ApplicationNumber&so=asc, last visited Aug. 12, 2019.

93 See, e.g., Henkel, C-218/01 [2004] ECR I-1725; Bongrain’s Application [2005] RPC (14) 306.

812 Vol. 109 TMR brown color of Werther’s Original flavored candy pieces94 and the shape of a Lindt chocolate rabbit covered in gold foil with a bell and a red bow95 were, on separate occasions, both deemed by the CJEU to be insufficient departures from shapes that were ordinarily used in the confectionary industry. Even though these two chocolate products were, strictly speaking, represented by spatially delimited shape and color configurations, generic shapes and colors commonly used for confectionery, such as brown-colored oval candy pieces or Easter bunny–shaped chocolate bars wrapped in gold foil, will not likely be perceived as being distinctive enough to communicate information about trade origin. The situation might be different, however, if an arbitrary color not commonly associated with chocolate, such as “Cadbury purple” or “Milka lilac,” were to be used in conjunction with a clearly defined, spatially delimited shape configuration. With some qualifications, a similar argument might be made in the context of “Louboutin red” for footwear, as red is not a functional or technically necessary characteristic of the soles of high-heeled shoes.96 In such circumstances, an unusual or arbitrary color that has acquired a secondary meaning in the industry may imbue an otherwise ordinary shape with distinctiveness, taking into account the overall visual impression of the mark.

Yet, even acquired distinctiveness, on its own, may not be sufficient to guarantee registration of a shape mark that is “filled” with color, and for which protection of the color is sought. One of the most straightforward ways of delimiting a color-based sign might be to represent it within the contours of a pre-determined shape or to apply the color to a specific “shape-contoured” area of a product surface. However, if the mark in question is one that results from the nature of the goods, is necessary to produce a technical result, or gives substantial value to the goods, then the hybrid “shape-color” mark can still be denied registration under Article 3(1)(e)(i), (ii) and (iii) of Directive 2008/95/EC,97 or equivalent domestic legislation. Hence, even an arbitrary color-based shape mark that is not ordinarily used in the industry may be excluded from registration if the mark consists principally of elements necessary to perform a technical function, or that enhance the value of the goods by accentuating their ornamental or decorative features.

94 See August Storck, C-24/05P [2006] ECR I-5677. 95 See Lindt v. OHIM, Case C-98/11P (May 24, 2012) (ECJ, Fourth Chamber). 96 It ought to be borne in mind, however, that the shape or contour of the shoe was not

included as part of the description of the Louboutin color trademark. The impact of the CJEU judgment in Louboutin will be discussed further in this section.

97 Council Directive (2008/95/EC). These absolute grounds for refusal of registration are contained in sections 3(2)(a), (b), and (c) of the UK Trade Marks Act 1994.

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It is apposite at this point to return to the Louboutin case,98 which provides some useful guidance on the applicability of functional, technical, and ornamental considerations to hybrid marks consisting of shape, color, and other elements. The Advocate General’s views, expressed in two separate opinions, are of special significance. In his first opinion, delivered on June 22, 2017, Advocate General Szpunar expressed the view that Louboutin’s red sole trademark for women’s high-heeled shoes could be classified as a shape mark, bearing in mind that shapes could include signs constituting a part or an element of the goods in question. In order to decide the question, it was necessary for the national court hearing the case to carry out an overall assessment of the mark, including its positioning on the goods, its graphical representation, and the descriptions filed at the time of application. The key issue in classifying the mark is whether the sign derives its distinctive character from the color (for which protection is sought) or from the precise positioning of that color in relation to other shape and product elements in the goods.99

In his additional opinion on the Louboutin case,100 which was delivered on February 6, 2018, Advocate General Szpunar reiterated his earlier view that the absolute grounds for refusal of registration in relation to shapes are capable of application to shape marks that are filled with a certain color, and for which protection of the color is sought.101 In this second Opinion, the Advocate General once again expressed his disinclination to classify Louboutin’s red sole trademark as a color per se mark, noting that, considered as a whole, the shape of the red-colored sole was “not wholly abstract or of negligible importance,”102 but constituted a focal part of the mark’s overall appearance. Hence, it might be suggested that the shape and the color are “mutually delimiting” elements of Louboutin’s trademark: the color delimits the shape, and the shape matches the spatial delimitation of the color.103

In the Advocate General’s view, the proper classification of Louboutin’s mark was therefore as “a sign consisting of the shape of

98 Christian Louboutin SAS v. Van Haren Schoenen BV, C-163/16, EU:C:2017:495 (Opinion

of Advocate General Szpunar, June 22, 2017). 99 See also Luxmi Rajanayagam, AG Szpunar’s position on Louboutin’s red sole mark: a

shoo-in for a shape mark, 12:11 J. Intell. Prop. L. & Prac. 887, 888 (2017). 100 Christian Louboutin, Christian Louboutin SAS v. Van Haren Schoenen BV, Case C

163/16, ECLI:EU:C:2018:64 (Additional Opinion of Advocate General Szpunar, delivered February 6, 2018). This additional opinion was delivered by the Advocate General after the case had been reassigned to the Grand Chamber, and a new hearing as well as a reopening of the oral procedure had been ordered.

101 Id. at [33], [34], and [67]. 102 Id. at [20]. 103 Id. at [19].

814 Vol. 109 TMR goods, and seeking protection for a color in relation to that shape.”104 Such hybrid signs that include elements of shape and color could be open to attack under the grounds for refusal of registration enumerated in Article 3(1)(e) of Directive 2008/95.105 In relation to Article 3(1)(e)(iii) of Directive 2008/95/EC, however, the Advocate General stated that whether a shape gives “substantial value” to the goods is to be determined only by reference to the intrinsic value of the shape and does not permit the reputation of the mark or its proprietor to be taken into account.106 Further, the introduction of the concept of a “position mark” in Article 3(3)(d) of Implementing Regulation 2017/1431 into the EU system did not, in the Advocate General’s view, qualify or alter his position on the applicability of the grounds for refusal in Article 3(1)(e).107 The corollary of this reading is that the classification of a sign as a “position mark” does not prevent the mark in question from consisting of a shape to which the grounds of refusal may potentially apply. Merchants seeking to register colors that are spatially defined by shapes and contours should therefore take steps to ensure that their specific signs are compatible with the additional requirements imposed by the Directive and the Implementing Regulations.

In its judgment of June 12, 2018, the CJEU noted that although Louboutin’s trademark was represented pictorially using images and outlines of shoes, Louboutin’s claim over its red-sole color trademark related principally to the color red and did not extend to the contour, shape, or outline of the shoes to which it was applied.108 Hence, the exclusion relating to shapes in Article 3(1)(e)(iii) of Directive 2008/95/EC did not apply to Louboutin’s color trademark as the mark in question did not consist exclusively of a shape.109 Although the CJEU’s judgment might seem, at first blush, to be favorable to the Louboutin mark, it should be borne in mind that the CJEU focused its attention on whether the shapes exclusions were applicable to the specific mark at issue. The CJEU judgment leaves open the questions of whether color trademarks in general can be challenged on other grounds not related to shape, and whether spatial delimitation can play a role in helping such marks satisfy the Sieckmann criteria. The CJEU judgment also leaves open the possibility that if a trader seeks protection in its

104 Id. at [22]. 105 Id. at [67]. 106 Id. 107 Id. at [34]. 108 Christian Louboutin SAS v. Van Haren Schoenen BV, Case C-163/16, EU:C:2018:423 at

[24] and [25] (Judgment of June 12, 2018), where it is noted that the registration of the mark did not seek to protect the shape, and the contour of the shoe did not form part of the mark.

109 Id. at [26]-[28].

Vol. 109 TMR 815 application for both the shape and the color of a hybrid mark, then the exclusions relating to shape may still potentially be applicable. The ruling therefore needs to be read in the light of the specific factual matrix applicable to the claimed scope of Louboutin’s color trademark.110 It might possibly be inferred from the CJEU judgment that a hybrid sign consisting of shape and color will likely be viewed more favorably than a color without any contours whatsoever; an indication perhaps that considerations of self-containment (or lack thereof) continue to drive the practical outcome of decisions in the field of color-based trademarks.

It should be re-emphasized at this juncture that the Louboutin color brand is spatially delimited, despite the fact that the shape-based contours that define the spatial distribution of the mark on the sole of shoes may not be part of the claimed subject matter. The visual impact of the Louboutin mark is accentuated by the fact that it is applied only to a clearly identified surface (i.e., the sole) of the product, even though the principal component of the mark is the color and not the shape of the product surface to which it is applied.

More generally speaking, the impact that shapes, contours, position marks, and three-dimensional configurations might have on the registration of color-based marks should also be considered in light of concurrent amendments to the Trade Marks Directive 2016 and to Article 7 of the EU Trade Mark Regulation to add the phrase “or another characteristic” to the absolute grounds for refusing the registration of certain types of shapes. The addition of this phrase will likely mean that attempts to register nontraditional signs, including scents, sounds and colors, will continue to face significant scrutiny despite the purportedly more permissive range of options available for graphical representation.111 In this regard, colors that are natural, technical, or ornamental, like shapes and position marks that perform similar functions, can be excluded from registration under the expanded provision. Brand developers seeking to employ color in marketing should therefore be aware of the legal implications of these developments in the law, and the significant practical restrictions that will continue to be applied to color-based signs and other nontraditional trademarks. The broader significance of these constraints is that while single colors will likely face significant difficulty in registration, even spatially delimited

110 Id. at [27]-[28], where the context specific focus of the CJEU’s judgment is made clear.

The CJEU’s reference to “a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the main proceedings” implicitly suggests that a different result may be applicable in other scenarios, particularly in cases where elements of both shape and color are claimed by a trademark registrant.

111 Under the Trade Marks Directive 2016, the ground for refusal of registration that previously related to “the shape of goods which gives substantial value to the goods” would now read “the shape of goods or another characteristic which gives substantial value to the goods” (emphasis added).

816 Vol. 109 TMR “hybrid marks” that consist of colors, shapes, positions and other features may face additional obstacles pertaining to issues such as functionality and distinctiveness. It would appear then that in order to be a strong candidate for registration, a color-based mark would have to be clearly represented in a self-contained manner, be distinctive enough to function as a badge of origin, and consist of elements that are not commonplace, functional, technical, ornamental, or utilitarian in the relevant field of commerce.

In view of the analysis in the preceding paragraphs, it can be observed that significant normative, doctrinal, logistical, and practical considerations continue to militate against allowing single colors on the trademark register, and these considerations mandate a cautious response to claims that the registration standards in the EU and the UK are now more relaxed and permissive. In practice, color-based trademarks appear to face at least as many obstacles against registration as they did before colors were formally recognized as potentially registrable signs. It ought to be emphasized, however, that it is not the contention of this article that colors be excluded categorically from trademark registration. Rather, its claim is that clearly defined restrictions should be placed on the registration of color, bearing in mind the attendant concerns facing the grant of legal exclusivity over the use of shades in marketing. In addition to being a sign, being capable of clear representation and of distinguishing goods or services, among other requirements, a registrable color-based mark should also contain adequate depictions of how it would appear on the product or advertising surfaces. A color-based mark that is spatially delimited would not only be in a form that can be communicated clearly on the register but would also be more easily recognized by consumers through marketing channels and in surveys, thereby increasing the likelihood that the mark would have acquired the requisite level of distinctiveness for registration. That is, perhaps, the underlying message in Cadbury and in the CJEU jurisprudence—recognizing, in all but name, a spatial delimitation requirement for color trademarks.

Despite the somewhat somber prognostications in the preceding paragraphs, it ought to be emphasized that it is, in principle, possible for a “hybrid” color-based mark consisting of a highly distinctive shade or combination of shades, and spatially delimited by a shape or configuration that does not offend any of the exclusions in the legislation, to be registered. Advocate General Szpunar expressly recognized this possibility in his additional Opinion in Louboutin, noting that “signs which are hybrids of several trademark types mentioned in Article 3(3) of Implementing

Vol. 109 TMR 817 Regulation 2017/1431112 are compatible with the EU trademark system.”113 Furthermore, it ought to be reiterated, in light of the Advocate General’s additional Opinion, that if the value of a hybrid shape-color trademark is generated by a trader’s marketing efforts and reputation, rather than derived from the intrinsic features of the mark, then the sign in question could still be registrable, as it would fall outside the ambit of the Article 3(1)(e)(iii) exclusion.114

If, in hindsight, Cadbury could have obtained a different result in the UK by framing its initial application more precisely, then adding clearly defined spatial boundaries to its highly distinctive shade of purple would have been a small price to pay for the significant economic and competitive advantages that registration would bring. The time is now ripe for a closer look at the challenge of spatial delimitation and self-containment for color-based brands, and the day that courts and policymakers reconsider this issue will undoubtedly be a momentous occasion in the history of European (and UK) trademark law.

VII. CONCLUSION Despite their appeal and power to convey brand messages in

marketing, single colors remain a highly controversial category of signs in trademark law. Although there have been concrete efforts made in recent years to accommodate an expanding range of sensory cues that can qualify as trademarks, courts at both the CJEU level and at the national level in the UK have been, at best, hesitant in their embrace of single colors as potentially registrable signs. The jurisprudence is somewhat contradictory, and the factual findings made in the leading cases appear to detract from their formal declaratory statements that single colors, on their own, can function as registered trademarks. A pressing concern is the lack of attention given to the Sieckmann self-containment criterion—whose paradoxical and conflicting interpretations have generated a considerable degree of uncertainty.

It will be interesting to see what impact, if any, Brexit will have on the future trajectory of UK trademark law, and if UK courts will depart significantly from Libertel and its uncertain interpretive legacy. It has been suggested that drastic changes to UK intellectual

112 The list of signs encompassed in Article 3(3) include examples such as position marks

(subsection (d)), color marks (subsection (f)), and sound marks (subsection (g)). 113 Christian Louboutin SAS v. Van Haren Schoenen BV, Case C 163/16,

ECLI:EU:C:2018:64 (Additional Opinion of Advocate General Szpunar, delivered February 6, 2018) at [33].

114 Id. at [67], noting that whether a shape gives “substantial value” to the goods is to be determined only by reference to the intrinsic value of the shape and does not permit the reputation of the mark or its proprietor to be taken into account.

818 Vol. 109 TMR property law are unlikely in the early years of a post-Brexit UK.115 Nevertheless, only time will tell how quickly trademark law in the UK will evolve and the shape it will take after its departure from the EU. In the meantime, however, it would be helpful for European (and UK) courts to clarify the meaning of self-containment and to elucidate the extent to which this criterion should remain a requirement for registration in the highly contentious, yet fascinating, field of color-based merchandising, as brand managers and corporations continue to vie for the most appealing and desirable shades for their commercial, marketing, and advertising endeavors.

115 See, e.g., Andreas Rahmatian, Brief Speculations about Changes to IP law in the UK after

Brexit, 12(6) J. Intell. Prop. L. & Prac. 510 (2017), highlighting the extraordinary difficulty and administrative complexity of unravelling many years of established precedent and “over forty years of UK membership” in the EU. In this vein, Rahmatian predicts that: “Realistically, IP law as it is will be taken over into the post-Brexit era without much reflection about possible reform.” Rahmatian also notes, at 511, the possibility that Scotland may leave the UK for constitutional and economic reasons, and observes as well that Scotland has voted (unambiguously) against Brexit with 62%.