We have certainly seen the colour of many corporations’ money when it comes to protecting a particular shade that is precious to their brand. We had the hard fought battle of Cadbury, who first began legal proceedings back in 2004, when it applied to the UK Intellectual Property Office to trademark the colour purple, or more specifically Pantone 2685C, for use on the packaging of its chocolate products.
After many years of hearings and appeals, Nestlé successfully overturned the trademark through the Court of Appeals, ultimately barring Cadbury’s claim over the colour purple in the chocolate industry. Even though Cadbury proved it had acquired distinctiveness, the decision was based on whether the language used by Cadbury in an application to trademark the colour had been clear. The word ‘predominant’ was deemed as an insufficient way to describe the scope of protection.
Other more successful examples include the well documented case by shoemaker Christian Louboutin and the shade of red used on the soles of its designer shoes. In a case brought by Louboutin in 2013, the Brussels Court of Appeal found that the company had created a distinctive and recognisable marker of its product with red soles. Louboutin has since had to amend its trademark registration and the company now has rights in the red sole, but only when the colour of the sole is in contrast with the colour of the shoe’s upper.
There seems to be a whole spectrum of confusion when it comes to trademarking a colour. This is perhaps understandable as, under EU law, in order to successfully register a colour trademark, it is imperative for the brand involved to establish that the colour has gained distinctiveness through use so that it is more than a mere decorative component.
The general criteria for the registration of colour trademarks was set forth by the Court of Justice in Libertel Groep BV v Benelux Merkenbureau,[fusion_builder_container hundred_percent=”yes” overflow=”visible”][fusion_builder_row][fusion_builder_column type=”1_1″ layout=”1_1″ background_position=”left top” background_color=”” border_size=”” border_color=”” border_style=”solid” spacing=”yes” background_image=”” background_repeat=”no-repeat” padding=”” margin_top=”0px” margin_bottom=”0px” class=”” id=”” animation_type=”” animation_speed=”0.3″ animation_direction=”left” hide_on_mobile=”no” center_content=”no” min_height=”none” last=”no” hover_type=”none” link=”” border_position=”all”][fusion_text] ECR I-03793. Like any other trademark, colour marks and colour combination marks are subject to an examination under Article 7 CTMR. However, due to the particular features of colour trademarks, some conditions for registration have proven to be particularly difficult, namely the graphic representation of the mark and the requirement of distinctiveness.
When seeking this special protection afforded to colours deemed to be trademarks, it is essential to make careful decisions concerning how the colour will be incorporated into the branding of the product. The current position of trademarking a colour in the UK involves several complex elements, from whether the colour takes up 50% of the product, to the level of precision in the trademark application and whether the graphic representation is infinitely clear.
Any applications submitted need to identify the exact shade of colour, preferably with the appropriate Pantone reference, a description and sample of the colour as well as providing proof that the colour is distinctive and in what way.
In the US, according to INTA, trademark law permits the use and registration of a single colour as a trademark. In order to obtain a federal registration for a colour trademark on the Principal Register, it must be shown that the mark is not functional, and similarly to the UK, that the mark has acquired distinctiveness. Evidence of acquired distinctiveness may include evidence of sales success, advertising expenditures, length and exclusivity of use, unsolicited media coverage and consumer studies.
Colours certainly can define a brand, from Louboutin’s red soles to the sought-after Tiffany blue jewelry box. However, as we have seen from the many recent cases, the legal position on trademarking colours is not exactly black and white and the battle of the shades looks set to rumble on.