When is a colour not a colour?

EU case law appears clear. After the Sieckmann case, we know that a trade mark (including a colour) will be registrable, providing its graphical representation is “clear, precise, self-contained, easily accessible, intelligible, durable and objective” (ECJ Case C-273-00 Sieckmann, confirmed by C-49/02 Heidelberger Bauchemie GmbH), and has a degree of permanence envisaged by the ECJ in Case C-104/01 Libertel. This usually involves the filing of a description or sample of a colour, together with a reference to an internationally accepted colour code.

So why, then, was an application filed in 1997 covering “fuel gas in liquid form”, which included a description of the mark as “yellow”, which was later clarified by the addition of an RGB number, finally refused registration by the Appointed Person in a decision dated 8 November 2006, on the grounds that the mark was ambiguous, and that no acceptable graphical representation had been filed (UK Application No 2154261 in the name of Calor Gas (Northern Ireland) Limited)?

The mark in suit was filed as a series of two marks in black and white, the first depicting a gas cylinder, in heraldic shading, with the description “The Trade Mark consists of the colour yellow applied to the outer surface of the cylinder within which gas is contained” . The shading on the application form conformed with acceptable norms of heraldic shading as representing the colour yellow or gold. The second mark of the series consisted of the description of the mark “The Trade Mark consists of the colour yellow applied to the outer surface of a cylinder within which gas is contained”.

After an initial skirmish (lasting until 1999) relating to the scope of coverage of the two marks in the series, the second mark was deleted, and the first amended to show that the whole visible surface of the cylinder was coloured. The application was accorded its original filing date of 23 December 1997, and battle was then joined over whether the mark had sufficient distinctive character to be registrable.

The Applicant proceeded to gather evidence of acquired distinctiveness of the mark, having been lulled into a false sense of security that the representation of the mark was clear, and that the filing date was safe. But no. Four years later, in August 2003, the Registry returned to the thorny issue of graphical representation, stating that the use of the description “yellow” in the application form had never been clarified by the addition of an acceptable Pantone number or other reference. By now, nearly six years had passed since the filing of the application and a further problem arose – if the applicant filed a Pantone number or other reference, then this would constitute an amendment of the mark, and the filing date would be lost. Thanks, however, to the use of correct heraldic shading, the examiner was prepared to allow the addition of a Pantone reference to the application, indicating that this would be acceptable clarification, and thus the filing date would be retained.

The Applicant filed an electronic image of what was purported to be RGB sample, with reference values R255, G160, B22. This might have been the end of the matter, were it not for the fact that when the electronic sample was checked, the colour appeared to be orange, not yellow, and so ambiguity remained. Correspondence ensued arguing whether the colour shown was actually orange or yellow. Quite reasonably, the Appointed Person commented that the fact that this discussion took place at all only served to confirm the ambiguity inherent in the combination of the colour as described and the RGB sample as filed.

A final deficiency notice was issued on 5 May 2005, advising that as the graphic representation was not unambiguous, the application would be refused. A Hearing was appointed for 18 January 2006, at which the Hearing Officer refused the application. The decision was appealed to the Appointed Person, who refused the appeal and the application was deemed never to have been made.

This might appear to have been an extremely long-winded way of dealing with the question of whether an acceptable graphical representation had been filed. It is the length of time taken which was also the subject of discussion in the Appointed Person’s Decision.

The filing of an acceptable graphical representation is stated, by Section 32(2)(d) of the Trade Marks Act, to be mandatory for a filing date to be accorded. Until such a representation has been filed, a filing date cannot be accorded, under Section 33(1). The procedure for refusing a filing date is also enshrined within Rule 11 of the Trade Marks Rules, which indicates that if deficiencies in an application are not remedied within two months of notification, then the application will be deemed never to have been made. No extension is possible.

Perhaps, therefore, the application should have been deemed never to have been made as of 20 March 1998, ie, on the expiry of two months of the first official letter. However, this letter from the Registry was not couched in the terms of Sections 32 and 33 or Rule 11, and indeed, did not refer to them. After some further rounds of correspondence, the Registry finally issued a deficiency notice on 3 September 1999 under Rule 11. At this point, the second mark in the series was deleted, and the first amended. The Registry accorded the original filing date to the application. This is contrary to the provisions of Section 33, which state that the filing date is the last day upon which all the required documentation is lodged.

When the Registry returned to the issue of graphical representation, they outlined the problem in a letter of 7 August 2003 to the applicant, giving it the statutory two months within which to respond. Again, no mention was made of relevant legislation, and an extension of time was requested. On 3 November 2003, the Registry sent a letter to the Applicant, indicating that the application could not proceed until the deficiency in the application had been remedied, and granting the requested further two months extension of time (expiring on 3 January 2004). Again, no mention was made of relevant legislation. The Appointed Person comments that it is not clear that the writer of the letter at the Registry actually understood Rule 11.

This is backed up by the fact that the Registry sent a further letter to the Applicant on 18 November 2003, apparently to clarify the previous letter, which indicated that if all outstanding matters were dealt with, then the application would be accorded its original filing date of 23 December 1997. This again is completely inconsistent with the provisions of Sections 32 and 33, and Rule 11.

At this point, the Applicant filed the electronic RGB sample, and the Registry responded on 24 March 2004, inviting the Applicant to file further information, and giving a deadline of 7 June 2004 so to do. This, again, is inappropriate. If the letter of 3 November had imposed a non-extendable deadline for compliance, then the Registry should not have allowed the filing of further information, but should have treated the application as a nullity, and allowed the applicant to appeal.

Unfortunately, however, this did not occur, and further correspondence ensued until a deficiency notice, under Rule 11 and referring to Section 32(2)(d) was issued on 5 May 2005. Finally, this notice confirmed that the two month deadline could not be extended, although it did remind the Applicant of its right to be heard. A hearing was requested, and it appears that the Registry had indicated that the deficiency notice would be held in abeyance if a hearing were requested.

The Hearing was finally set for 18 January 2006. The Hearing Officer confirmed the validity of the deficiency notice, and confirmed that the application was deemed never to have been made at the expiry of the deficiency notice on 5 July 2005.

At the appeal, the Appointed Person questioned the validity of the hearing, and commented that the Applicant was therefore out of time for appealing against the original deficiency notice. However, the Appointed Person considered that the Hearing Officer had exercised a power to extend the time for appealing and he was therefore entitled to hear the case. As indicated above, he dismissed the appeal.