Colour combination trade mark application is rejected

The OHIM Board of Appeal has upheld an examiner’s decision to reject an application by Caterpillar, Inc. to register the colours yellow, black and white as a Community trade mark.

The Facts

Caterpillar’s application included a graphical representation of the mark in colour, accompanied by the following description:

“Protection is claimed for the colours black, yellow and white in the specific colour shade shown in the e-file of the application; the figurative elements are exclusively used to show the systematic arrangement of the colours concerned in a predetermined and uniform way; the ratio of the colours is approximately 55% (black), 30% (white), 15% (yellow).”

The Decision

The OHIM Board of Appeal dismissed Caterpillar’s appeal of the examiner’s decision and ruled that the graphical representation of the trade mark was undermined by the accompanying verbal and colour description and that the trade mark lacked the required precision and objectivity.

The Board stated that there were endless numbers of forms that would fit the description and that consequently, Caterpillar could assert rights over forms that might differ quite significantly from the mark filed. The way in which the blocks of colours could be arranged in Caterpillar’s mark was indeterminate and allowed different combinations, such that a consumer would not recall a particular one.

Practice Points

This case importantly demonstrates that the representation of a mark must be complete, clear, precise and objective.

Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the
accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.

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