In a preliminary injunction proceeding between Hilti AG and Milwaukee Corp, Hilti alleged that its Austrian mark for the colour red (RAL 3020) for "cases for hammer drills" and its three-dimensional Community trade mark for a red case for the same goods were infringed. The colour mark and the three-dimensional mark were registered following the filing of proof that the interested circles recognised the marks as an indication of origin (secondary meaning). Milwaukee sells sets of tools, including hammer drills, in red cases.

Hilti form mark for a red case

Red Milwaukee case from front and reverse side

The question of whether secondary meaning was really proven is a prerequisite for the protection of the Hilti colour trade mark. Since colours are one of the most important and most often used means of promotion, there is a strong need to keep them free for general use. Therefore, they can only be monopolised by proving a high level of secondary meaning. As the colour red as a signal colour is used increasingly widely as a decorative element for both goods and their packing, a very high level of recognition has to be proven.

The Austrian Supreme Court has in the past accepted the colour combination blue-white for petrol stations (Aral II) in a case where 85% of all private car owners surveyed associated the colours with one particular firm. A special colour red for legal books (Manz-red) was also accepted, where the degree of association with the publisher "Manz" was more than 90%. The Court has refused an application for the colour blue for pipes (partly because of the strong need to keep the colour blue free as an indication for water pipes) where there was a proven level of recognition of 65% among all plumbers.

In the Hilti case, the association of that colour red with a specific firm was proven for just over half of the questioned persons (51%). This is not enough to be able to monopolise the important colour red for tool-cases, so the protection of this colour mark had to be refused.

The three-dimensional mark is infringed if the two cases are similar. In comparing the two forms, their similar colour red has to be disregarded, otherwise you could protect the colour red for such tool-cases without the proper basis for its protection. Only the outer form must be compared. The court decided that, since the Hilti mark shows an elegant attaché case and the Milwaukee case makes a bulky impression and has additionally a prominent white script on the front and reverse side and black handles on its small sides, they cannot be confused if the colour red is not protected.

This decision shows that it is important to have colour protection but that this can only be obtained if there are strong efforts to make that colour well known in the trade.

Helmut Sonn

SONN & PARTNER Patentanwälte
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