Colour War in the World of Trademarks
More and more non-traditional marks are registered as trademarks. Such non-traditional trademarks include sound (1), scent (2) and colour. The criteria for protecting these trademarks differ by countries. In case of colour marks, some countries (3) allow protection of a single colour, whereas in others a combination of at least two colours is required, and in yet others there are further conditions to be met. Colour mark registration has started in the Baltics as well, e.g. Löfbergs Lila AB has registered the purple colour mark in the field of coffee products in Estonia (4).
Colour battles are held in courts
Today there are numerous colour mark related court cases worldwide. For example, Windows has filed a lawsuit against Google, claiming that Chrome OS infringes on its own Windows logo colour scheme (5). Other well-known cases include the ice cream package litigation commenced in the United States in 1986, which concerned exclusive right to use royal blue for frozen sweets packages. Precedent was solved by the decision stating that the colour mark was acceptable if the colour was indeed recognised as a distinctive feature to identify the goods produced by a particular company. However, the court did not allow protection of blue colour, claiming that blue as “cool“ colour is a functional colour in case of frozen sweets due to its association with ice cream, and giving exclusive right would grant colour monopoly (6).
Colour functionality test has also been used more recently, e.g. it has been considered unacceptable to register green colour as a trademark in the field of gardening or red colour in the field of fire extinguishers.
Protection criteria in Europe
The European Court of Justice (7) has defined the functionality test and in Europe the following criteria are applied to protect colour marks, including single colours:
- Clarity and precision. Colour without spatial delimitation can be a trademark, if its graphic representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. In practice, the colour has to be identified by means of internationally recognised colour identification code, such as Pantone.
- Distinctiveness. The colour mark has to be distinctive, i.e. it has to allow the consumer to distinguish the product from one supplier to that of another. In simpler words this means that one has to ascertain that, in the colour mark context, the colour can really be used as a distinguishing feature indicating the origin of the product.
- Prohibition of colour monopoly. One also has to consider public interest to avoid unjustifiable restriction of free use of colours by other enterprises providing similar goods and services. Assessment of public interest, in particular, should take into account the colour functionality test.
The confusion in granting the protection is understandable – after all, a trademark should be a symbol that distinguishes goods or services provided by one person from similar goods or services provided by another person. Therefore geographic indication (a prerequisite for registering a trademark pursuant to the Trademarks Act) of a single colour is not enough, but it is also required to ascertain the distinctiveness of the colour and consider the need to make existing colours available for other enterprises as well.
(1) E.g. the sound known from NBC television channel, United States trademark no 916.522.
(2) E.g. the first scent trademark was registered for scented sewing thread in the United States in 1990.
(3) For instance in France.
(4) Trademark no. 48763, Pantone purple 2627.
(5) E.g. here.
(6) Court judgement in the case of Ambrit v Kraft is available here.
(7) Primarily judicial decisions on Libertel (C-104/01) and Heidelberger (C-49/02).