A number of brands rely heavily on colour as part of their packaging and branding. Think of Qantas, with their distinctive red and white, or McDonald’s, whose arches would arguably not be the same if they were fuschia rather than golden. It follows that a business can register a specific shade or colour combination as a trade mark.
In a nutshell, the courts have tended to respond to the question, ‘can you own a colour trade mark’ in the affirmative – however, there are a number of caveats to this response.
We unpack this question in greater detail and highlight why it is incredibly difficult trade mark a colour.
When Can a Colour be Registered as a Trade Mark?
An individual or business can register a colour as a trade mark if they can answer yes to the following three questions:
- Does the public view the colour and the good or service which it is associated with as synonymous?
- Does the colour, on its own, distinguish the goods or services?
- Is the colour part of a trade mark and not part of the packaging or the goods themselves?
Courts have also emphasised the importance of specificity. Generally speaking, companies cannot trade mark a colour, but rather than can only trade mark a specific shade. For example, Cadbury has successfully trade marked Pantone 26558C in Australia. The rationale behind this is that giving one corporation the exclusive right to use a colour would give them an unfair advantage in the market.
For similar reasons, a colour trade mark can only operate with respect to a particular class of goods or services. In the case of Cadbury, courts have described their trade mark as operating in relation to the following:
- milk chocolate in bar and tablet form,
- milk chocolate for eating,
- drinking chocolate, and
- preparations for making drinking chocolate.
It’s also important that companies do not seek to trade mark a colour in relation to their goods that has a functional aspect. For instance, a business selling red velvet cupcakes would not be able to trade mark the colour red in relation to their goods.
Ownership vs. the Right to Exclude Competitors’ Usage
The limitations described above mean that a company that registers a colour as a trade mark does not really ‘own’ the colour in question. For example, Cadbury cannot stop a pre-school from painting its walls in Pantone 26558C by claiming trade mark infringement. Corporations do not gain possession of the colour, but simply the right to use the colour, exclusively, in relation to their goods/services.
Complications often arise when it comes to owning a colour trade mark. Although Cadbury currently holds a registered trade mark in respect of Pantone 26558C in Australia, other brands have successfully challenged this trade mark in other jurisdictions.
In UK case Societe des Produits Nestle S.A v Cadbury UK (2013), Nestle challenged Cadbury’s trade mark on the grounds that it did not meet the baseline requirements for a trade mark. A trade mark must be both
- a sign; and
- capable of being represented graphically.
Nestle contended that Cadbury’s purple colour trade mark was not ‘a sign’ and could not be accurately and specifically graphically represented.
The Court, ultimately, sided with Nestle. It made clear that companies can, hypothetically, own colour trade marks. However, Cadbury’s description that it had entered into the register was deemed to be too vague as it contained the phrase “predominant colour’’.
In the Court’s view, this meant that Cadbury was not seeking to trade mark one, clearly-bounded sign. Rather, they were attempting to trade mark multiple signs since the purple could appear together with various words, letters, in different concentrations, etc.
Many of the issues surrounding vagueness, uncertainty and imprecision seemed to have arisen in relation to the phrase ‘predominant colour’. As a result, Cadbury sought to amend the description it had entered in the register. This process, however, is strictly regulated and Cadbury was denied the ability to do so. As a result, their colour trade mark is no longer valid in the UK. The confectionary giant may now have to rely on the common law tort of passing off in the future to prevent competitors from using its distinctive, purple colour scheme.
Many companies rely on colour schemes as a key element of their branding. Although companies can obtain trade mark registration for a colour, it’s very difficult.
Companies will need to establish the following:
- that the public views the goods/services and the colour as synonymous,
- that the colour alone distinguishes the goods/services, and
- that the colour is part of the trade mark and not merely an element of goods or their packaging.
It is also necessary that the colour meets the basic trade mark requirements of being a graphically representable sign. As the Cadbury case demonstrates, it can be difficult for a colour to satisfy this criteria. Companies may, therefore, rely on the common law tort of passing off to assert their rights.
If you have any questions, get in touch with our IP lawyers on 1300 544 755.