A landmark decision enforces abstract colour marks in Serbia. Dusk, and there is a light fog. Your fuel gauge signals that the tank is almost empty. Like a shining star, the familiar colour combination of your preferred filling station shimmers in the darkness (perhaps you like the quality of their service, cleanliness, prices or coffee). Expecting your favoured station, you turn off the road and drive toward it. Except now you realise it's a completely different station which only uses a similar colour combination in their signage. Bad luck for you, but also bad luck for the well-known petrol station brand.
Can the abstract colour combination of a filling station be protected as a brand? Can you sue a competitor who uses a similar colour combination? Following a ground-breaking Supreme Court ruling, this is now possible in Serbia.
So far, Serbian courts have assessed the question of the likelihood of confusion by outsourcing this question to an expert. The expert worked out the (colour) differences between brands and gave his opinion on whether the degree of similarity was sufficient to justify the likelihood of confusion. Usually this was denied unless the appearance was identical or at least showed similarities as to word elements. Now, for the first time, the second instance court and ultimately the Serbian Supreme Court have put a stop to this practice and decided that in the case of consumer products, the similarity test and examination of the likelihood of confusion must always be assessed by the judge himself:
"The respondent's objection relying on the expertise is thus unfounded. Similarity, i.e. the distinction between two trademarks, is a factual question which the court assesses by assuming the position of the average consumer."
This case concerned the enforcement of an abstract colour combination mark in the filling station sector. The courts made an overall assessment. In filling stations in particular, the perception of the brand depends less on details such as logo or design and more on the colour combination used which you perceive fleetingly as you drive past. The colour combination is registered quickly at first sight and can even be considered the dominant element of the overall appearance.
Leaving behind the inflexible approach of considering similarity based solely on expert opinions, the courts moved towards a more creative and constructive application of the law. The courts chose to see the case through consumers' eyes, or better yet, through the car windscreen. The colour combination is key for deciding whether the average driver can be misled when confronted by similar gas station appearances. Mimicking the basic arrangement and choice of colours at a gas station is not affected by nuances in colour or geometry of specific design elements or decoration. Even subtle changes in nuance within the same colour can no longer be used as an argument that a trademark is not sufficiently similar to rule out any confusion or association.
No doubt, this fundamental decision will have far-reaching significance for the enforcement of abstract colour marks in Serbia in general.
This article was up to date as at the date of going to publishing on 10 December 2018.