Colour marks remain difficult to obtain, but brand owners can take certain steps to enhance their chances of success.
Recognising that colours can significantly improve brand recognition, brand owners are increasingly turning to non-conventional colour marks to protect the colours associated with their brands against use by competitors. These marks are often considered to be of great value to the owners. However, it has not proved easy to obtain such protection. Although in theory it is possible to trademark a colour or combination of colours, there is still little guidance regarding the requirements for valid colour marks, and few succeed.
Research shows that over the past three years, although 43 colour trademarks were filed at the UK Intellectual Property Office, to date only five have been registered. Even once registration is obtained, the courts have consistently taken a narrow approach to the validity of such marks. The latest Court of Justice of the European Union (CJEU) decision in Red Bull v EUIPO (Case C-124/18 P) has done little to clarify matters.
Registration red lines
Colour marks must overcome two main hurdles: the colour must have acquired distinctiveness, and the mark must be satisfactorily represented in the application for registration.
Colour is generally seen as a decorative property of goods, rather than a sign which conveys a message to consumers as to the origin of a product. Therefore, in order to be registrable, a colour mark must have become distinctive of a particular brand through extensive use. As with other types of non-verbal trademark, applicants for an EU trademark must be able to demonstrate the mark’s distinctive character throughout the European Union.
However, despite this high threshold, there are still successful instances of colour marks proving distinctiveness through use, such as the colour red (Pantone 18-1663TP) applied to the sole of a shoe in Louboutin (Case C-163/16) (see Figure 1). In this case, the mark had acquired distinctiveness through use before registration, including through an extensive advertising campaign. Another successful example is the Mars Petcare UK mark for the shade of purple used on its Whiskas cat food. In 2007 the Office for Harmonisation in the Internal Market Board of Appeal (Case R 1620/2006-2) held that the colour mark had acquired distinctive character so as to allow it to operate as a trademark based on the high-quality survey evidence put forward.
All colour marks must also satisfy the Libertel test, which requires that the precise shade of colour for which registration is sought should be identified through an internationally recognised identification system such as Pantone. Combinations of colours must also be arranged systematically in a “predetermined and uniform” way (Heidelberger Bauchchemie). Aiming to provide more flexibility to register non-traditional trademarks such as sounds and smells, the recent EU trademark reforms have removed the requirement for graphical representation of a mark. However, in the absence of any specific guidelines as to how to register such marks, it is unclear exactly what constitutes sufficient representation under the new legal regime. Recent case law (Giro v Andreas Stihl, Case R 200/2017-2) suggests that the seven Sieckmann criteria – requiring a mark to be clear, precise, self-contained, easily accessible, intelligible, durable and objective – remain the touchstone in determining the validity of a colour mark.
Recent UK and CJEU cases emphasise the particular difficulties in representing colour marks with sufficient precision.
Following a hard-fought battle with Nestlé, earlier this year Cadbury surrendered its 1995 registration for “Cadbury purple” (ie, Pantone 2685C) “applied to the whole visible surface or the predominant colour applied to the whole visible surface of the packaging of the goods” (see Figure 2). The distinctiveness of its characteristic purple, which has been used in various permutations for over 100 years (and even adorns the train station serving Cadbury’s Bourneville base), was not contested. However, the UK Court of Appeal had previously found the trademark to be invalid because the “predominant colour” language was found to cover an unknown number of potential signs (Nestlé v Cadbury  EWCA Civ 1174). A subsequent attempt to separate out a valid mark for purple applied to the “whole visible surface’’ of the packaging failed in 2018 (Cadbury v Comptroller General of Patents Designs and Trade  EWCA Civ 2715).
One of the drivers behind the courts’ reluctance to uphold colour mark registrations is a policy concern to avoid awarding businesses potentially permanent monopolies over certain colours – particularly where a potential infringer cannot easily understand the precise form of the mark. In this case, Nestlé perceived a threat to its own purple Quality Street (in addition to an opportunity to take on its rival, following Cadbury’s long-running opposition to the shape mark registration for Nestlé’s Kit Kat bar).
Glaxo v Sandoz
It might therefore seem that the chances of obtaining a valid registration are higher where, rather than monopolising a single colour, a trademark consists of a combination of two or more colours. However, in another recent UK case concerning the colour purple (Glaxo v Sandoz  EWHC 1537 (Ch)), the High Court found that Glaxo’s mark for the two shades of purple used on its blockbuster inhaler (see Figure 3) was invalid because it covered a multitude of different forms. Therefore, the mark was held not to be sufficiently clear, precise and uniform. This decision was upheld by the Court of Appeal ( EWCA Civ 335) based on its determination that the registered mark was not merely the visual representation of these colours as used on the inhaler, but also the more abstract description provided by the applicant which referred to a darker purple applied to “a significant proportion of an inhaler” and a lighter shade applied to the remainder.
Glaxo’s case continues as a passing-off claim against Sandoz in relation to Sandoz’s use of a similar purple get-up for its own inhalers, which was heard this summer in the UK High Court. This could be considered the more conventional approach to protecting a company’s get-up, including the colours of its packaging. However, the requirement to meet the high bar of proving misrepresentation in such cases means that it will remain attractive for companies to also seek the protection of colour marks.
Red Bull v EUIPO
The CJEU took a similarly narrow approach in its latest judgment regarding colour combinations, handed down on 29 July 2019. This decision regarding the blue and silver used on Red Bull cans (see Figure 4) “applied in equal proportion and juxtaposed to each other” further highlights the difficulty in defining the precise arrangement of multiple colours. The CJEU upheld the General Court’s finding that the registration covered numerous different combinations and therefore would not permit the consumer to perceive and recall any one particular combination (a prerequisite for the colours to function as a sign indicating the goods’ origin).
Red Bull’s argument that this approach effectively limits colour combination marks to figurative, position or pattern marks, rendering the protection of colour combination marks per se impossible in practice, was dismissed. The CJEU emphasised that the requirement for a systematic arrangement of colours does not mean that the colours must be defined by contours, although little guidance was given as to what arrangements might be acceptable.
Practical tips for colour mark success
Although it is clear that the law envisages that colour marks, including combination colour marks, are capable of registration, the question of how an applicant can describe the application of the colour or the combination of several colours with sufficient precision to obtain a valid trademark remains.
The Louboutin and Whiskas decisions discussed here show that it is possible to successfully obtain a colour mark where the form of the sign is clear, the colours are specifically defined using a recognised identification system and the spatial delimitation of the sign is sufficiently precise. However, marks for combinations of colours face particular difficulties. Brand owners will have to hope that future cases provide clearer guidance on registering colour combination marks.
In the meantime, when looking to file a colour mark, they should consider the following options.
Consider including a description
The Cadbury and Glaxo cases exemplify the difficulties in supplementing the visual representation of a colour mark (and associated colour scale identifier) with a written description. In Red Bull the CJEU reiterated that any written description must serve to clarify the subject matter and the scope of protection sought, and must not be inconsistent with the graphic representation of the mark. In practice, if the description of how the colour (or colours) is used is too narrow, it may not cover infringing uses and indeed may be little different to registering a figurative mark. On the other hand, overly broad descriptions are more likely to be found to be invalid.
It may therefore seem better to avoid filing a written description at all. However, the description remains a valuable opportunity to explain the use of the colour mark (eg, applied to the sole of a shoe), which may aid the applicant in demonstrating distinctiveness, help to fulfil the requirement for satisfactory representation and more closely align the mark with the specific way in which the colour has been used. While each case will depend on its facts, it seems likely that going forward, more filings will rely mainly on the visual representation.
File multiple forms
Brand owners registering colour trademarks for colour combinations would be well advised to make multiple filings showing the colours arranged in different orientations and configurations. This will help to avoid the need to include an overly broad (and therefore imprecise) written description of how the colours are used – of the kind that the courts have previously held to be invalid – in any one application. Making multiple filings may also increase the likelihood that one or more of the colour marks applied for will be upheld.
Rely on other forms of protection
In light of the difficulties in registering colour marks, it would be wise to file figurative marks setting out the way in which a brand’s colours are most commonly used at the same time, or prior to, filing any colour marks. Certain uses of colour on products or packaging may also lend themselves to protection as registered designs. While the scope of protection gained will be more limited, given the uncertainties regarding the validity of colour marks, it may be extremely valuable to be able to fall back on this protection.
Abel & Imray
This article first appeared in World Trademark Review. For further information please visit https://www.worldtrademarkreview.com/corporate/subscribe