Roughly speaking, the human eye can differentiate more than 6,000 different colors. Modern printing technology can provide around 8,000 types of colors for our daily use. A 24bit monitor can display 16,777,216 colors. In one word, we are living in a colorful world. So what about your products?
A product with colorful packaging or decoration will obviously cater to the natural human love of color. A design of colors will be considered as a valuable intangible asset for a product’s brand. Brilliant businesspeople have been aware of it for a long time. However, how do you prevent your valuable colors from being “borrowed” by a competitor when selling products in China? More specifically, what action(s) should be taken place to protect your colors is a meaningful and challenging question that you should keep in mind when doing business in China, one of the biggest markets in the world.
A brief and straightforward answer would be to register the combination as a trademark. Given that the right owner will enjoy the exclusive right of use over the registered trademark in the P.R.C, any other third party cannot use it with authorization; therefore seeking trademark protection shall be the first and foremost option in China.
Below we will discuss in detail how to protect your product’s color combinations in China.
How to apply
According to the Trademark Law of the PRC, the combination of two or more colors, which can distinguish the source of products, can be submitted for trademark registration (Article 8 of the Trademark Law). Apart from the regular documents which are required for a traditional trademark application, in order to file a trademark application for combinations of colors, the following tips should be borne in mind:
a. In the application, the applicant shall clearly clarify that the application is for combinations of colors. Otherwise, it will not be examined as a combination of colors trademark. In practice, it will normally be recognized as a figurative trademark application.
b. The applicant has to provide a clear sample of the concerned color combinations with particular chromatographic numbers.
Roadblock – Lack of Distinctive Features (Article 11.1(3) of the Trademark Law)
The main purpose of a trademark is to assist customers in distinguishing the sources of various kinds of similar products. Therefore, the distinctiveness will be seriously tested during the examination of each trademark application. Given that a combination of two or three different colors will usually be too simple to pass the required distinctiveness test, it is not that easy to register a combination of colors in China.
In Fluke Corporation vs. TRAB (2013), Fluke applied for no.8006090 “Click here to view image” trademark before the CTMO, but was refused by both the CTMO and TRAB due to a lack of distinctive features. In the administrative lawsuit, Beijing First Intermediate Court held that
“According to Article 11.1(3) of the Trademark Law of the PRC, a mark without distinctive features shall not be registered as a trademark. Since the main purpose of a trademark is to differentiate the sources of products from each other, any mark which cannot achieve this purpose shall be considered as lacking distinctive features. In the current case, the designated colors and method of combination are the normal design utilized in the electronic industry, and therefore cannot be recognized as trademark”.
In a similar case, Information Card LLC. vs. TRAB (2012), the Appellant applied for no.5858687 “Click here to view image” trademark before the CTMO, and was also refused by both the CTMO and TRAB for the same reason. In the second instance administrative lawsuit, Beijing High Court held that
“The combination of blue and white spots is too simple to be a capable mark which can distinguish the sources of goods/services.”
Breakthrough – Obtain Distinguishability through Use (Article 11.2 of the PRC Trademark Law)
According to the above, it seems to be impossible to apply for a combination of color trademark with simple colors. The truth is that if the applicant can prove that the concerned mark has acquired distinctiveness and become easily distinguishable through use, it is likely to obtain the CTMO’s permission of registration.
In the Review of Refusal of No. “Click here to view image” Trademark Application, after reviewing the evidence of use provided by the Applicant, the Gillette Company, TRAB made the decision that their trademark application shall be approved. In contrast to the two cases discussed above, in this case the Applicant submitted ample evidence relating to the duration and method of use of this combination of colors on specific battery products, the advertising made for the corresponding battery products, sales scale of the products bearing applied mark, etc., which successfully persuaded the TRAB examiner into believing that the “Click here to view image” mark has obtained distinguishability through long-term use.
In the Review of Refusal of No.4496717 “Click here to view image” Trademark Application, TRAB also overruled the CTMO’s decision on the refusal of trademark registration, and upheld the allegation made by Deere & Company as the Applicant that the “Click here to view image” combination of colors has been used on harvester by Deere for a long period of time in China, which has enjoyed quite a high reputation among relevant consumers, and therefore, it has acquired distinctiveness.
From the above precedents, it can be concluded that the evidence of long-term use of applied colors combination on designated products by specific method is crucial for an applicant to successfully register a combination of colors trademark in China. Such pieces of evidence include (a) sales invoices of particular goods bearing related to the combination of colors, (b) corresponding bills of sales, shipping bills, (c) advertising service contracts, corresponding payment documents, (d) promotional materials, such as brochures, yearbooks, advertisements (online and offline), (e) awards, etc..
Protect Scope of Color Combination Trademarks
Contrary to traditional trademarks, such as word trademarks and figurative trademarks, which can be recognized as trademark without adhering with designated goods, combination of color trademarks have to combine with particular products to be acknowledged as a trademark. We call it the “Method of Use”. Otherwise, it can only be considered as several colors without any inherent meaning. Nevertheless, it does not mean that color combination trademarks only have a limited protection scope. On the contrary, in certain situations, a color combination trademark will provide better protection than a traditional trademark.
In Deere & Company vs. Jiu Fang Tai He International Heavy Industries (Qingdao) Corporation & Jiu Fang Tai He International Heavy Industries (Beijing) Co., Ltd. (2014), the Plaintiff was the right owner of the above discussed no.4496717 “Click here to view image” colors combination trademark. The designated goods included harvesters. The Method of Use was to use the color green on the body of the harvester and yellow on the wheel hubs, as depicted below:
Click here to view image.
The Defendants in this case used a similar combination of colors on their harvester by a similar method as seen below:
Click here to view image.
In the lawsuit, the Plaintiff alleged that Defendants’ use of the combination of green and yellow colors had infringed its registered trademark right in China. Accordingly, both Beijing Second Intermediate Court (the first instance) and Beijing High Court (the second instance) held that the two Defendants infringed the Plaintiff’s registered trademark right and granted compensation of CNY 450,000 to the Plaintiff against the Defendants.
In the second instance judgment, Beijing High Court stated that,
“during the application of the alleged trademark, Deere has clearly limited the method of use into ‘green main body and yellow wheel hubs’. Relevant consumers always associate this method of use with Deere’s agricultural machinery. … Despite the Defendants labeling their own brand on the suspected infringing harvester, their use of an extremely similar color combination by a same/similar method in the same/similar goods will cause confusion as to the goods’ origin among relevant consumers.”
It is a classic example of how to use a trademark right to protect the overall appearance of physical products. It can hardly be protected if the trademark is a traditional figurative mark. The following case gives us a pretty good example.
In Fluke Corporation vs. Shenzhen Fu Tai Ke Apparatus Technology Co., Ltd (2014)., as discussed above, the Plaintiff failed to register the “Click here to view image” color combination trademark. Nevertheless, Fluke is the right owner of the registered “Click here to view image” figurative mark in China with registration number 9723048 over electronic test equipment. In the current case, Fluke alleged that the overall appearance of the Defendant’s product which is listed below had infringed its registered figurative trademark right.
Click here to view image.
In the Judgement, the court denied all demands claimed by the Plaintiff and determined that the appearance of the Defendant’s products did not infringe the Plaintiff’s trademark right, mainly on the basis that the 2D figurative mark cannot prevent the use of a 3D overall appearance of a physical product.
In comparison with the Deere case, we can imagine that if Fluke had obtained a color combination trademark, the Court may have reached a completely different decision in this case.