23/07/2025
A recent decision of the General Court illustrates the difficulty of claiming inherent distinctiveness for a mark that consists solely of a combination of colours. The decision also clarifies that the EUIPO Guidelines cannot override established case law principles.
The core purpose of a trade mark is to act as a badge of origin: to identify the source of goods or services and distinguish them from those of other businesses. For a mark that consists of a combination of colours to be able to fulfil this origin function, it must be capable of attracting the consumer’s attention and must contain elements capable of distinguishing it from other colour combinations.
Austrian petrochemical company OMV AG had designated the EU under their International Registration (“IR”) No 1593116 for a mark consisting of a combination of the colours blue and green, as shown below:
The colours were identified by OMV as “gentian blue” (RAL 5010) and “yellow green” (RAL 6018).
The IR was based on OMV’s “home” Austrian Application No 12685/2020 and covered a broad range of goods and services in multiple classes. The EUIPO Examiner partially refused the EU designation in respect of some of the goods and services, mainly relating to fuels, hydrogen, oils, and vehicle equipment (in Classes 1 and 4) and related services (in Classes 35 & 37).
The Examiner found OMV’s mark to be “devoid of any distinctive character” within the meaning of Article 7(1)(b) EUTMR in respect of the objected goods and services, as the mark was held to be simply a “a systematic arrangement of two colours”.
The Examiner found that in relation to the objected goods and services, the mark would be perceived primarily as a “decorative element or an embellishment serving aesthetic purposes”. The Examiner also commented that the colours blue and green are commonly used in relation to these sorts of goods and services and are well known to be associated with the idea of environmental friendliness.
OMV appealed against the Examiner’s decision. The Board of Appeal dismissed the appeal, and OMV appealed to the General Court.
Both Marques (an organization that represents trade mark and IP owners and professionals) and the International Trademark Association (INTA) considered the case to be important for the development of EU trade mark law and each filed a Statement in Intervention to support OMV.
In their Statement in Intervention, INTA argued that the Board of Appeal had wrongly assessed the distinctiveness of OMV’s mark, by applying the same high threshold set for single-colour marks and by failing to consider properly both the systematic arrangement of the colours and the relevant market. Marques submitted similar arguments in their Statement.
In their appeal, OMV referred to the EUIPO Guidelines, which state that while marks consisting of a single colour are not considered distinctive for any goods and services except under exceptional circumstances, the same is not true for marks consisting of combinations of two or more colours. The Guidelines state that such colour combination marks can only be refused based on specific facts or arguments, and where such specific arguments for refusal are not established, the mark must be accepted (EUIPO Guidelines Part B, Section 4, Chapter 3, Para 14.2).
The General Court rejected this argument, noting that: “the EUIPO guidelines are not binding legal acts for the purpose of interpreting provisions of EU law.” In the present case the General Court also considered that the decision to refuse this application was anyway not out of line with the Guidelines.
The General Court found that the evidence filed by OMV was irrelevant to the question of the inherent distinctiveness of the mark. The evidence included market studies from various EU Member States from 2022-2023, which were in any case conducted after the EU designation date.
The General Court found nothing wrong with the Board of Appeal’s analysis of the inherent distinctiveness of the mark. The General Court held that the Board of Appeal had correctly considered that blue and green colours are commonly used in the filling station market and that the specific tones and arrangement of the mark did not enable the relevant public to perceive it as indicating commercial origin. The environmental connotations of the colours blue and green were properly considered in assessing consumer perception.
In the original decision the Examiner had commented: “If motor vehicle drivers were to recognise a service station from a distance by its colour, it would only be if they had become accustomed to it through use”.
The case will now go back to the EUIPO to assess whether the mark has actually acquired a distinctive character through use (Article 7(3) EUTMR). OMV may still explore this possibility.
If you are seeking to protect a colour combination mark, you should be aware that a “systematic arrangement of colours” does not provide a presumption of registrability. Depending on the number and arrangement of the colours, you may be required to demonstrate that your mark has acquired distinctiveness. This means that you would need to be able to prove that your mark had already acquired distinctiveness through use made before the filing date of your application. This can be a high threshold to reach, especially in the case of EUTMs.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
Board of Appeal decision dismissing the appeal: R 798/2023-5
Case T‑38/24: JUDGMENT OF THE GENERAL COURT (First Chamber) of 11 June 2025: CURIA – Documents
