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Registration of colour trademarks: colouring outside the lines?

‘A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights.’ [1]

Every business has its own mark whether registered or not. For legal entities, opting for the registration route, there are a handful of different types of trademarks to choose from, depending on the circumstances of each case in question. The most common types encountered are ‘word’ and ‘figurative’ trademarks. However, there are less common types, also known as non-traditional trademarks, through which one can opt to register sound and motion as trademarks or even colour(s).

In this blog post, the focus will be on the registration of colours as trademarks.


So, what exactly are colour trademarks?


According to the European Union Intellectual Property Office’s (EUIPO) Trademark Guidelines:

A colour mark is a trade mark that consists exclusively of a single colour without contour or a combination of colours without contours. What is protected is the shade of colour(s) and, in the case of more than one colour, the systematic arrangement of the colours in a predetermined and uniform way.[2]


Some interesting and well-known examples of colour trademarks are:

  • the colour red for the soles of women’s high-heels (Louboutin)[3]

  • the colour light blue in relation to the packaging of jewels (Tiffany)[4]

  • the colour brown in relation to parcel delivery vehicles as well as uniforms (UPS)[5]


Evidently, in the mind of the average consumer, a colour can be associated with a certain brand and its goods and services; thus, indicating the origin of the goods and services of a particular enterprise. Interestingly, it has been argued that sensory branding, which encompasses the five senses: sight, smell, sound, taste, and touch; can be very useful in forming a valuable and significant brand message while at the same time aiding businesses in engaging and maintaining clients.[6] Thus, one can see why brand owners might try to register colour trademarks that are associated with their brand and which have been proven to be successful in attracting and retaining their customer base.

It should be noted, that securing trademark protection for a specific colour is no easy task. The granting of a colour trademark to a certain applicant for specific goods and services means that third parties, who might wish to proceed with the registration of and/or use the same colour for similar goods and services, would be prevented from doing so. This translates to the fact, that if an individual or legal entity proceeds with the registration of a trademark identical to an already registered trademark, then they could risk being accused of trademark infringement by the trademark holder.

The colour depletion theory

The so-called colour depletion theory supports that since colours are of a fixed number, the act of providing ‘exclusive’ trademark rights in relation to colours would potentially lead to the exhaustion of the available colour options and, as a result, it would be considered as an anticompetitive act.[7] Additionally, supporters of this theory are of the opinion that if ‘more single colours are claimed, the distances between colours shrink and the boundaries between colour trademarks will be blurred’.[8]


On the other hand, critics of the theory tend to think otherwise, supporting that it has ‘little scientific basis’, and that ‘it fails to take into account the specific properties of colour including hue, saturation, and value and therefore underestimates the thousands, if not millions, of different colours distinguishable to the human eye'.[9] On top of that, it should be highlighted that in today’s digital world, colour depletion is apparently not the main issue, since the available technological advancements provide the opportunity to reproduce certain colour shades in relation to specific goods with ease.[10]

Route to registration


For a trademark office to grant a colour trademark, certain criteria must be met, as it is usually the case with trademark registration. It should be noted that even if the prerequisites for registering non-traditional trademarks may vary, the fundamental principle that underpins trademark law is that a trademark should be able to differentiate the holder’s goods and services while operating as a sign of their origin.[11] For that reason, ‘generic’ marks that are void of ‘distinctiveness’, or of the ability to operate as a trademark, are often be rejected.[12]

A recent example, where the European General Court had to consider whether to grant or not protection to a colour trademark, is Case T-168/21 Magnetec v EUIPO (Light blue),[13] which touched upon the issue of whether it would be possible for a certain colour sign characterised as ‘light blue: RAL 5012’ to be considered as ‘sufficiently distinctive’ so as to be granted registration as a European Union Trademark in relation to goods included in Classes 6, 9, and 17.[14] In this instance, the General Court stated that ‘distinctiveness needs to be evaluated not in abstract terms, but rather having regard to the average consumers of the concerned goods/services’.[15] In essence, this case further highlighted the principle that colour marks can be registered on an exceptional basis.[16]


Thoughts


As mentioned above, the act of successfully registering a colour trademark is a difficult one. For applicants wishing to proceed with the registration of a colour trademark, the act of proving distinctiveness, in relation to the goods and services for which protection has been sought, has proven to be a complex endeavour.


One must not neglect to mention that colours are proven to be extremely useful marketing tools that could eventually become distinctive trademarks in the mind of the consumer. Evidently, through the existence of famous colour marks that we all know and recognise in the market, colour trademarks have the ability to shape our perception of a brand, and aid us in distinguishing the goods and services of one brand from another. Now, whether one could eventually succeed in registering a colour trademark, that’s a different story.







Endnotes

[1] WIPO, ‘Trademarks-What is a trademark?’, accessed 30 October 2022.

[2] EUIPO, ‘Trade mark guidelines – 9.3.6 Colour marks’, accessed 30 October 2022.

[3] Michael Bernet, ‘Can You Trademark a Color?’ (IPWatchdog, 14 July 2018), accessed 30 October 2022.

[4] ibid.

[5] ibid.

[6] Lisa P. Ramsey, ‘Non-Traditional Trademarks and Inherently Valuable Expression’ in Irene Calboli’s & Martin Senftleben’s (eds), The Protection of Non-Traditional Trademarks: Critical Perspectives (Oxford University Press, 2018) 1, accessed 30 October 2022.

[7] Danielle E. Gorman, ‘Protecting Single Color Trademarks in Fashion after Louboutin’ (2012) Cardozo Arts & Entertainment Law Journal 10, accessed 30 October 2022.

[8] Wang, Xiaoren, ‘Should We Worry about Color Depletion? — An Empirical Study of USPTO Single Color Registrations’ (2022) CREATe Centre, School of Law, University of Glasgow 1, accessed 30 October 2022.

[9] Gorman (n7) 12.

[10] Gorman (n7)12.

[11] Ramsey (n6) 9.

[12] Ramsey (n6) 9.

[13] [2022] C 463 37

[14] Nedim Malovic, ‘General Court considers whether light blue colour mark is sufficiently distinctive to be registered as an EU trade mark’ (IPKat, 16 October 2022), accessed 30 October 2022.

[15]ibid.

[16]ibid.


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