Following our introductory article to non-traditional trade marks in the UK and Europe, here we look at how parties can trade mark colours per se. Colours are a valuable tool in the marketing of products and services. They have the capacity to indicate origin and distinguish products or services from others on the market, they can communicate complex information relating to the particular attributes of a product or service, they can stimulate emotions and their visual aestheticism can ultimately induce a sale.
There are several ways to protect a colour by way of trade mark registration. Provided it is sufficiently distinctive, a colour can be indirectly protected as part of a figurative mark such as the red background in the Coca Colour sign or as part of the unique get up/property of a product, such as the highly distinctive red Louboutin sole.
Arguably the best way to protect a colour in terms of the widest monopoly conferred by a registration is through registering a colour per se. A colour per se is an abstract colour without fixed or defined contours. Obtaining registration for a colour per se gives the owner exclusive rights in the shade of colour and the ratio/combination in which it is applied (in the case of colour combinations).
In effect, this means that provided the owner does not detract from the shade or the ratio/combination which is the subject of the registration, the colour can be applied to any product irrespective of its size or shape. A good illustration of the dynamic nature of colour per se marks is BP’s registration for the colour green (Pantone 348C) which is applied to the canopy of their petrol stations, the exterior of their shops, the BP logo, the forecourt and the signs at the entrance.
An owner of a colour per se registration can prevent third parties from using identical or similar colours on identical or similar goods and/or services. As a general rule, the more distinctive the colour, the wider the monopoly and scope of enforceability against infringing third parties and applicant’s attempting to register an identical or similar colour.
At present there are very few cases which provide guidance on the enforceability of colours per sebut a good example is the BP case referred to above. BP managed to bring a successful infringement claim against a third party using a similar shade of green for their petrol stations. This case demonstrates the commercial and legal benefits of owning a registration for a colour. Had BP merely relied on their registration for the BP logo, it is highly likely that their infringement action would have failed as it is doubtful that their sign and the third party’s TOP mark would have been considered confusingly similar. Consequently, the scope of BP’s monopoly for the colour has provided them with a strong basis to oppose/bring infringement proceedings against anyone in the petrol industry seeking to use a similar colour, even where third parties’ figurative marks are dissimilar to that of the BP logo.
Inevitably registering a colour per se is not an easy task as such an extensive monopoly may be incompatible with the system of undistorted competition and unduly restrict the availability of colours for other traders. Accordingly, protective measures are in place to ensure that only distinctive signs which are capable of acting as a badge of origin proceed to registration.
The first obstacle typically faced by applicant’s is ensuring that their application satisfies the requirement of graphic representation pursuant to section 1(1) Trade Marks Act 1994 (as amended) (‘TMA ’94’) and Article 4 Community Trade Mark Regulations (Council Regulation (EC) No.207/2009) (‘CTMR’). Case law indicates that for a colour mark to be correctly represented graphically, an image of the colour must be provided as well as an internationally recognised identification code and a description on how the colour is going to be applied and in what ratio (in the case of a colour combination).
Generally speaking, satisfying the requirement of graphic representation is not a major hurdle en route to registration. The biggest obstacle in the application process is proving that the mark is sufficiently distinctive to enable the consumer or end user to identify the goods and services covered by the mark as originating from a particular undertaking as opposed to another. Typically, applicants will encounter an objection under s3(1)(b) TMA 1994 or Art 7(1)(b) CTMR on the ground that the mark in question is devoid of any distinctive character.
There are two ways to overcome this objection. The proprietor must either prove that their colour has acquired a sufficient degree of distinctive through the use made of it or, if the colour hasn’t been used, prove that the colour possesses a sufficient degree of inherent distinctiveness. In the case of the latter, cases are decided on a case-by-case basis so it is difficult to predict the likelihood of success from the outset as this will ultimately come down to the facts and strength of legal argument.
However, applications which have proceeded to registration in the first instance without having demonstrated acquired distinctiveness indicate that an applicant has greater prospects of success where their colour mark is highly distinctive when used in relation to the particular goods or services in question, where the goods and/or services are aimed at specialists rather than for mass consumption and where the specification is extremely narrow.
Should the applicant overcome the various obstacles en route to registration, the owner will have the opportunity to establish a solid market position by developing goodwill and repute in their colour mark whilst excluding third parties from using that particular colour in relation to similar or identical goods and/or services.
In our experience, interest is growing in colour marks from our UK and international clients wishing to add them to their trade mark portfolio and enhance their existing rights.