The Czech Trade Marks Act no. 441/2003 Coll. lists the signs which may be trade marks: words, personal names, colours, designs, letters, numerals, shape of goods or their packaging. The fact that colours are expressly mentioned at the very beginning of this definition could create the erroneous impression that colour marks are commonplace in the Czech Republic.
However, a brief glimpse at the statistics of trade marks registered by the Czech Industrial Property Office (the "IPO") reveals that only 3 colour marks altogether have been registered so far, whereas 12 applications have been rejected since 2001. Two registered colour marks are owned by providers of mobile telecommunication services, namely Vodafone (red) and Deutsche Telekom (magenta), which could be attributed to the fact that there are three major mobile operators on the Czech market and therefore colours they use in relation to their products and services can rather easily acquire distinctive character. The third colour mark (also magenta) has been registered for KOVOTOUR PLUS, a travel agency. Comparing the relative time taken to register these marks’, we see a promising development: while Vodafone’s registration took more than 4 years, it took KOVOTOUR PLUS slightly over 2 years and Deutsche Telekom less than 15 months to register their colour trade marks.
As far as other Czech national non traditional marks are concerned, no smell, sound or hologram marks have been applied for or registered. However, there are 461 registered 3D marks in total and the oldest, in the shape of a bottle, dates back to 1956 as well as 245 colour trade marks registered by OHIM that are protected in the Czech territory, together with 118 sound and 9 hologram trade marks registered either via OHIM or WIPO.
Analysis of four published decisions issued in the second instance proceedings by the IPO reveals that the IPO likes to refer expressly to CJEU rulings, namely to Libertel (C-104/01), HAVE A BREAK (C-353/03) and Doublemint (C-191/01).
The use of principles from Libertel and HAVE A BREAK may be seen in the IPO's decision in the Orion case reaffirming the refusal to register dark blue colour (Pantone 288 C) for chocolate products. Taking into consideration that one of the world's most famous colour trade marks is lilac for Milka chocolates, the IPO's decision in Orion demonstrates its strict approach to the registration of colour marks. The word trade mark "Orion" for chocolates had been used since 1914 and today the Orion chocolate is the most successful product on the Czech chocolate market. The applicant provided evidence that the dark blue colour had been used in connection with Orion products at least from 1995. Notwithstanding market research conducted by the applicant, in which 94% of respondents associated the dark blue colour with the Orion chocolate (some spontaneously, some choosing from a list of producers of chocolate products), the fact that dark blue colour dominates the packaging of Orion products and that it was widely used in TV commercials, the IPO refused to register the colour as a trade mark.
The IPO’s first reason for rejecting the registration was that the particular shade of dark blue colour was not specific enough to allow an average consumer to identify it in the relevant market. The IPO deduced that if it had permitted registration of the blue colour, it would have essentially blocked other producers from using most other common shades of the colour, since an average consumer would not be able to distinguish between the colour applied for and any other common shades of the colour blue. Furthermore, the IPO considered that the colour blue for chocolate is commonplace as it is associated with milk chocolate; similarly, according to the IPO, the colour red is used for dark chocolate and green for chocolate with nuts. Thus the registration would run counter to the public interest in not unduly limiting the availability of colours for other chocolate producers. Therefore permitting the registration would conflict with the CJEU ruling in Libertel. The second question was whether the colour had acquired distinctive character. The IPO stated, following the reasoning of the HAVE A BREAK decision, that the acquisition of distinctive character may result from the use of a separate sign in conjunction with a registered mark, if in consequence of such use consumers actually perceive the product as being designated by the sign. However, in this case, since the colour applied for had always been used together with other colours and with a star bearing a word element “Orion”, the IPO concluded that the blue colour would not be perceived by an average consumer to be an independent trade mark. Additionally, it was found problematic that the producer had been using different shades of blue both in commercials and on packaging. As a result, the sign was not found to have acquired distinctive character.
Taking into account also the Vodafone decision under which the colour red (Pantone 485 C) was successfully registered for mobile telecommunications services, it seems that, according to the current IPO’s practice regarding the registration of colour marks, a successful applicant must choose an exactly defined shade of a colour that will be sufficiently specific with respect to a particular market. Given the low distinctiveness of colour marks in general, the applicant will in most cases have to prove that the colour has acquired distinctive character. In order to achieve this, only one shade of the colour should be used (in commercials, business relations, on packaging etc.) and the use should be consistent and long term. Last but not least, the impression that the colour makes on consumers should prevail over any other word trade marks or signs, if these are used together with the colour mark.