Recent trade mark decisions in Europe highlight just how difficult it can be to protect colour through trade mark law.
In the recent UK case of Glaxo v Sandoz, at issue was the validity of a registration for a trade mark that showed a representation of a purple-coloured inhaler, together with a description reading that the trade mark consists of the “colour dark purple (Pantone Code 2587C) applied to a significant proportion of an inhaler and the colour light purple (Pantone Code 2567C) applied to the remainder of the inhaler”.
Unsurprisingly, the court held that the registration wasn’t valid. The reason: it wasn’t sufficiently clear, precise and unambiguous and all those other good things that the courts and Trade Mark Offices have been requiring ever since the famous decision of Libertel. In this case, the European court said that a colour can be registered if it can be “represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective”.
In the case of the purple inhaler, however, there was “no strict congruence between the visual representation and the description”. So, how was it to be interpreted? As the judge said, there is “no automatic precedence between the visual representation of the trade mark and its description”. What judges need to do is interpret the trade mark as best as they can. What judges won’t like are loose expressions like “significant proportion” and “remainder”, which are potentially infinite. What judges will like are certainties such as shape and contour.
In a recent German case, however, the court found in favour of a company claiming colour. The case involved the banks Sparkassen and Santander, and the issue in question was the validity of a trade mark for the colour red (without contours or limitations) for banking. The court held that the registration was fine because a consumer survey proved acquired distinctiveness – in Germany, a survey must apparently show that the colour is seen as a source indicator (and not merely as decoration) by more than 70% of those surveyed.
We have discussed colour trade marks in a number of previous articles. There was the famous UK Cadbury case, in which an application to register the colour purple (Pantone Code 2685C) for chocolate failed because the description referred to the fact that the colour formed the “predominant colour” of the packaging, which the court felt wasn’t sufficiently precise. The court said that the trade mark lacked “the required clarity, precision, self-containment, durability and objectivity to qualify for registration”. It felt that the wording of the Cadbury trade mark in fact covered multiple trade marks because of the implied reference to other colours. It said this:
“To allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. It would also offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage.”
We’ve also discussed BP and how the company failed to get green (Pantone Code 348C) registered in Australia because it had failed to prove acquired distinctiveness.
So, what about South Africa? It may be possible to enforce rights to colour through the law of passing-off, and even by using the passing-off style clauses of the Advertising Standards Authority (“ASA”). Although the ASA generally doesn’t show much appetite for colour claims, in a recent decision involving two big beer brands, it accepted that the one had rights to a combination of silver and green.
As for trade mark registration, the definition of the word “mark” in the South African Trade Marks Act makes specific reference to colour. Many years back, Cadbury failed in an application to register the colour purple, but this matter never went beyond the registry, and the application was seemingly dismissed because there was insufficient proof that the colour had become distinctive of one company’s chocolate products. As far as I know, there hasn’t been a High Court decision on colour trade marks in South Africa.
In my view, the important thing is to be as precise a possible – a Pantone code, consistency between the drawing or representation and the wording, and absolutely no imprecise words like “predominant” or “significant”. It’s worth bearing in mind that there is a great deal at stake with colour trade mark registrations and that the authorities are rightfully circumspect. As the UK Court of Appeal put it in the Cadbury case:
“As the registration of a trade mark creates a form of intellectual property conferring a potentially perpetual monopoly in the mark and excluding everybody else from use in various ways, the point of principle has some public importance.”