The Spanish Supreme Court has recently ruled against the registration of the International TM application nº 908137 in Spain in the name of Orange Brand Services Limited (Orange). The application consists in the orange color (Pantone 151) and was opposed by Jazz Telecom, S.A.U (JazzTel) on the basis of an alleged lack of distinctiveness.

The Supreme Court (SC) alleges that the necessary distinctive character cannot be inferred in the present case. The orange color applies for, is a usual color in the market that need to remain accessible for other traders to use. The general interest is in principle contrary to the restriction of the use of the colors by all the trade operators.

The opponent, JazzTel indeed has accredited the use of the orange color for distinguishing its goods and services in the field of telecommunications. Therefore, the SC concludes that the proposed mark is not “ab initio” eligible for registration for a wide range of goods and services in classes 9, 38 and 42. The fat that the color is circumscribed or delimited by a square or a rectangle does not change at all the aforementioned reasoning in the SC’s opinion.

Although the Spanish TM Act does not establish any hindrance to the registration of the colors “per se” as trademarks, still those applications needs to be examined on the basis of the distinctiveness. It is true that in some exceptional cases where it has been demonstrated that the consumers unequivocally associate a specific color to a known distinctive sign, the registration of the color mark is possible. In general, those are cases where an acquired distinctiveness through the use is proved.

In view of the above, Orange conducted and filed a market survey in order to establish the level of awareness that the Spanish consumer had over the mark, its market share, and its position therein.

The results showed that 49% of respondents recognized the orange square, and among these, 80% associated it with Orange. In the SC opinion, the survey reveals a rather weak consumer’s identification of the sign applied for and the particular brand. Furthermore, the association of the Spanish average consumer with the applicant company barely reaches 40% of the participants in the study.

In any case, the study merely prove that a percentage of the participants, even if scarce, link the orange color to the goods and services offered by Orange but not that the said orange color delimited by a square or rectangle is the one determining the consumer link. The SC explains that Orange is aware of this as evidenced by the fact that the company is the owner of a CTM registration consisting in the same square/rectangle orange device that, however, includes the denominative element ORANGE so that the Spanish consumer completely identifies the commercial origin of the goods and services.

This decision is another setback for the registration of the color marks that comes right after the UK’s Court of Appeal decision in the Cardbury purple mark case. However, we would love to think that there is still hope for non-traditional marks provided they are well drafted.