HomepageCommercial LawPrivate LawPublic Law & Human RightsCriminal LawEU & International LawCareers

Accessibility

Have Irlen Syndrome, or need different contrast? Click the button below for options.

Background Colours

Subscribe

Enter you email address below to subscribe to free customisable article notifications.

Alternatively, click the button below for our various RSS Feeds (available journal wide, or per section).

Is it Possible to Trademark a Colour?

Image © Flickr

About The Author

Maxi Kussatz (Writer)

Maxi graduated from the University of Birmingham in 2013, where she studied Law and Business. Having trained with the German Legal Consultancy firm Meyer-Reumann and Partners in Abu Dhabi, Maxi is now returning to the UK to study for here LPC at University of Law Cambridge. Maxi's interests lie in EU Law, International Law, and Intellectual Property.

Trademarks will usually embody the first contact consumers have with brands. A trademark’s ability to represent its brand is perhaps its most essential purpose, as it is the significance of a specific brand that provides trademarks with their economic value.

Louboutin red, Tiffany’s blue and Cadbury purple, are all colours closely related to specific brands, but is it really possible that a company has sole rights to a colour?

A colour trademark is a non-conventional trademark where one or more colours are used to perform the trademark function of identifying the commercial origin of a product. In recent times colours have been increasingly used as trademarks. However, in the past, colour registration was more problematic since colour was not considered to be a distinctive mark. This issue was addressed by the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights, Article 15(1), which broadened the legal definition of trademark to encompass ‘any sign... capable of distinguishing the goods or services of one undertaking from those of other undertakings’.

The trademarking of colours tends to be a difficult subject and sparks much debate as it is treated differently around the world. Recently the shoe designer Louboutin, famous for their red-lacquered soles, has received the assent of a US court to trademark the colour red, whereas, in the UK, Cadbury failed to trademark its prominent purple.  

Trademarking colours in the EU and UK

Article 4 of the European Council Regulation No. 40/94 states that any community trademark (CTM) may consist of:

Any signs capable of being represented graphically... provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings…

In the case of Libertel Groep v Benelux Merkenbureau the ECJ held that colours per se, which are not applied for by reference to an explicit surface, can be registered as trademarks, but only in restricted circumstances. It is not enough for a brand to apply for registration of a colour, instead it is necessary to provide where and to what extent this colour will be used. The Court identified three requirements under Article 2 of Directive 89/104:

  1. a sign;
  2. capable of graphic representation; and
  3. capable of distinguishing the goods or services of one undertaking from those of other undertakings.

This definition commonly includes colours, and therefore an applicant for a CTM or even a national trademark in the European Community may classify their colour trademark using an international colour code such as RAL or Pantone. Nevertheless, a colour trademark will be registered only after an enhanced distinctiveness through use in the EC has been established.

In the interest of free competition, consideration should be given to all parties wanting to make use of a specific colour before awarding trademark status. Additionally, the greater the number of goods or services for which a colour is applied for, the more likely the registration is to come into conflict with other traders’ interests. As the EU trademark system is one of review prior to registration, and not a posteriori review, it seems important that the interests of other traders are considered during the registration stage, and are not left for deliberation when raised as a defence to infringement actions.

In summary, a trademark under EU law is distinctive if it distinguishes the goods or services on which it is used from others. The perception of the public is therefore essential. Consumers are accustomed to words and symbolic marks being indicative of a product’s origin, but not necessarily to seeing colours as a representing factor. A trademark such as McDonald’s ‘M’, is clearly recognisable by consumers as they are frequently used as a marketing tool. A single colour however might be more difficult to link to specific products. Therefore, colours per se are not distinctive except in exceptional circumstances, for example where colour is only claimed for a very restricted number of goods in a very specific market. Case law such as Louboutin’s red soles and the Tiffany blue boxes have obviously shown that colours can acquire distinctiveness after the normal process of familiarisation with the public has taken place.  In assessing the acquired or inherent distinctiveness of colours, the competent authority must carry out its assessment by reference to the actual situation in the case (and not in the abstract), taking into account all of the circumstances and any use that has been made of the mark.

Although it has been established that colours can in fact be protected by trademarks, the ability to protect colour in UK trademark law has been questioned after the Court of Appeal’s decision Société Des Produits Nestlé SA v Cadbury UK Limited in October 2013. The Court referred to the EU’s requirements under Article 2 of Directive 89/104.

Cadbury’s purple was said to be ‘applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods’. Furthermore, during court proceedings ‘the exact visual presentation’, meaning a precise description of the packaging outlay, was not clarified. The absence of a precise description could give Cadbury a huge advantage over its competitors, as the colour in discussion could be used however they saw fit. Hence, the Court concluded that Cadbury’s mark did not constitute ‘a sign’ and thus failed to satisfy conditions (i) and (ii) of Article 2 of the Directive (as outlined above). 

Lord Timothy Lloyd proposed in his judgment that an application for a colour trademark by Cadbury might have been successful if it had been specified that a minimum ratio (for example: 50%) of the wrapper would have to be covered by the particular shade of purple.

The verdict raises new hurdles for registering colours. Nevertheless, it should be noted that it does not declare registering an abstract colour as a sign impossible. In order to successfully register a colour trademark, it is imperative to establish that the colour has gained distinctiveness through use so that it may be more than a mere decorative component.

Louboutin’s red soles and the position in the US

US trademark law was established under the Lanham Act. Until the 1980s, US law refused to recognise a single colour as a brand. However, colour combinations had long been protectable. This changed when Owens-Corning launched the ‘Think Pink’ campaign for its fibreglass building insulation. In 1985, a US Court of Appeal in Washington ruled that the company had the right to prevent others from using pink for insulation. In the landmark case Qualitex, which involved the colour of dry cleaning equipment, the US Supreme Court held that US trademark law ‘permits the registration of a trademark that consists, purely and simply, of a colour’.

The Lanham Act states (s. 15):

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it…

(e) Consists of a mark which…

(5) Comprises any matter that, as a whole, is functional.

Thus, if a colour is held to have a functional property of any product it cannotbe registered as a trademark. In re Orange Communications, Inc., the Trademark Trial and Appeal Board denied registration of the colours orange and yellow for public telephones because it ensuresthe goods’ better visibility under any lighting condition. Hence orange is not seen as a unique colour helping the promotion of the manufacturer, but simply a tool to aid visibility.

Furthermore, in order to register a colour trademark, it may not have an aesthetically functional purpose. In Brunswick Corp. v British Seagull, for example, the United States Patents and Trademark Office's Trademark Trial and Appeal Board held that the black colour was not registrable for outboard motors:

[A]lthough the colour black is not functional in the sense that it makes these engines work better, or that it makes them easier or less expensive to manufacture, black is more desirable from the perspective of prospective purchasers because it is colour compatible with a wider variety of boat colours and because objects coloured black appear smaller than they do when they are painted other lighter or brighter colours.

Recently, shoemaker Louboutin won theexclusive right to red-soled heels (except when the shoe itself is red). The US Federal Appeals Court ruled that the contrasting red soles on shoes from designer Christian Louboutin are sufficiently distinctive to necessitate trademark protection. The ruling adds an important chapter to the history of colour trademarks, and has broad implications that go well beyond the fashion industry.

Louboutin sued fashion house Yves Saint Laurent (YSL) in 2011. The court found Louboutin had the right to trademark protection for its red soles, as long as they contrasted with the rest of the shoe. The ruling therefore fell short of preventing the manufacture of YSL's red-soled, monochrome shoe.

Conclusion

Following the evaluation of the cases above, it can be concluded that the protection of individual colours through specific trademarks is possible both within UK and US law. When seeking this special protection afforded to colours deemed to be trademarks, it is essential to make careful decisions concerning how the colour will be incorporated into the branding of the product. In summary, the current position of ‘trademarking a colour’ in the UK is as follows:

  • Protection for specific colours is available in limited circumstances but applications will be examined closely, to check that they are not overly broad;
  • Brand owners should avoid use of the word "predominant" in trademark applications for colours (Nestlé v Cadbury);
  • The colour must take up 50% of the products;
  • A sign will not be capable of graphic representation if it includes a great diversity of different illustrations or arrangements;
  • Precision is vital in the drafting a trademark application and brand owners should ensure that the graphic representation for trademarks are clear and precise.

For the latest articles straight to your inbox, you can subscribe for free. Alternatively, follow @KeepCalmTalkLaw on Twitter or Like us on Facebook.

Tagged: Commercial Law, Competition, European Union, Intellectual Property, International Law, Trade

Comment / Show Comments (0)

You May Also Be Interested In...

A Permanent Investment Court: The Future of the International Investment Regime?

28th Aug 2018 by İnayet Aydeniz Baytaş

A Global Perspective on Anti-Suit Injunctions

4th Jul 2017 by Alexios Ektor Koursopoulos

Let There Be Light: Evaluating Legal Reform of Energy Companies

8th Oct 2015 by Anirudh Mandagere

The Validity of E-signatures

12th Aug 2014 by Maxi Kussatz

Competition v Intellectual Property - Clarity but little substantive change

27th Mar 2014 by Chris Bridges

Transatlantic Trade and Investment Partnership - Realistic?

30th Nov 2013 by Helen Pearson (Guest Author)

Section Pick April

Pharmaceutical Transparency under the EU's Clinical Trial Regulation

Editors' Pick Image

View More

KCTL News

Changing of the Guard: Moving Keep Calm Talk Law Forward

12th Aug 2018

An Anniversary or Two: Four Years of Keep Calm Talk Law

11th Nov 2017

Rising from the Ashes: The Return of Keep Calm Talk Law

18th Nov 2016

Two Years On, Keep Calm Talk Law’s Legacy is Expanding

11th Nov 2015

Keep Calm Talk Law's First Birthday

11th Nov 2014

Twitter

Javascript must be enabled for the Twitter plugin to function. Click below to visit us on Twitter.

Free Email Subscription

Subscribe to Keep Calm Talk Law for email updates, and/or weekly roundups. You can tailor your subscription on activation. Both fields are required.

Your occupation / Career stage is used to tailor your subscription and for readership monitoring.

Uncheck this box if you do not want to receive our monthly newsletter.

By clicking the Subscribe button, you agree to our privacy policy and terms of service. Please ensure you read these in full.

Free Subscription