Recap from the K&L Gates publication Trademarks and Unfair Competition, Quarterly Bulletin, 1/2017 – click here.
On 19 October 2016, the Board of Appeal upheld a decision by the Cancellation Division entirely invalidating a graphic trademark registered on 7 December 2007 by the Hudson’s Bay Company. The basis for the invalidation was Article 51 par. 1a), pursuant to which a trademark must be deemed as having expired if it is not used for a period of five years.
The trademark in question consisted of four stripes of different colours: green, red, yellow and blue, and was registered as a graphic trademark, not as a combination of colours per se. The Hudson’s Bay Company used that colour combination on its products, but not in the form of stripes on a white rectangle, but as stripes running across the entire width of a product. The Cancellation Division found that, placed on a given product in that manner, the colours did not function as a trademark, that is, they did not serve to identify the origin of the product, but only constituted a decorative design. In addition, the products themselves appeared in different colour versions and not in the version reserved for the mark.
The Cancellation Division found that the relevant target group of consumers perceived the striped pattern as a design, and not as a trademark, and that the Hudson’s Bay Company had not provided evidence attesting that this was not the case. The Hudson’s Bay Company lodged an appeal against the decision to invalidate, arguing, among other things, that the colour combination used always consists of four colours of evenly placed stripes in the colours green, red, yellow and blue. The company added that, of course, the colour scheme does constitute a decoration, but is used for the purpose of identifying the company.
The Board of Appeal dismissed the appeal. It found that the trademark had been registered as a graphic mark, not as a colour combination. Therefore, the use of the trademark cannot differ from what was registered, and so the same combination of colours must appear in the same order and in the same proportions. The Board of Appeal found that, used in the manner it is, the mark should not have been registered as a graphic trademark, but as a colour combination per se. Certainly, the Hudson’s Bay Company would then enjoy such protection, and there would be no doubt concerning actual use. Nevertheless, because the colour combination was registered as a graphic trademark, the Board of Appeal upheld the stance of the Cancellation Division that the trademark registered had not actually been used for five years and dismissed the appeal.