No sooner have we had a decision regarding the registration of a smell as a trade mark than the attempt to pin down another of our senses is under scrutiny. However, whereas the registration of a smell was fairly soundly defeated, the latest case paves the way for future registration of colours.
Trade Marks are conventionally viewed as words or logos and these elements make up by far the majority of registered trade marks. However, nothing per se cannot act as a trade mark, providing it distinguishes one trader's products from those of others.
Companies are always trying to find ways to protect and register elements that distinguish their products from other traders, thus maintaining their competitive edge. One important element in the marketing mix is the colour of a product or its packaging and a recent opinion by the Advocate-General of the European Court of Justice (ECJ) has shed some further light on whether colours can be registered as trade marks.
The European Union Trade Mark Directive, which forms the basis of all trade mark law in the EU, defines a trade mark as follows: -
'A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods and services of one undertaking from those of other undertakings.'
In short, to be registered, a trade mark must overcome three hurdles.
- It must be a sign,
- It must be capable of being represented graphically and,
- It must be capable of distinguishing the goods and services of one undertaking of one undertaking from those of other undertakings.
A Dutch firm Libertel attempted to register, at the Benelux Trade Mark Office, the colour orange as a trade mark as used in relation to telecommunication services. The case was referred up to the ECJ and on the 6th May 2003 Advocate-General Leger provided an opinion on Libertel's application. Although the ECJ is not bound by the opinion of the Advocate-General, generally it does follow his findings when a case comes to a full decision.
In short the Advocate-General found that the Libertel application failed on the second hurdle. Libertel had submitted a representation of the colour orange as part of the application process and had also described the trade mark for which registration was sought in words as simply 'orange' without reference to any colour code.
Advocate-General Leger stated that mere representation of a colour does not constitute a graphical representation as the sample of colour can degrade over time. Furthermore, a description of the colour in words, without a colour code, does not satisfy the criteria of graphical representation. The name of a colour does not satisfy the trade mark registration criteria of the description as being clear, precise, self contained, easily accessible, intelligible, durable and objective. If the description of a registered trade mark is not clear, there is no certainty as to the scope of protection of the mark and thus competitors will be unsure as to where protection begins and ends. Above all, the law must be certain to be just.
However, the Advocate-General explicitly stated that the problem of registering colour trade marks could be overcome if a colour code, such as the internationally recognised Pantone system, was used as part of the description of the mark. This of course did not help Libertel as they had not used such a description and thus the application to register the mark was rejected.
The Libertel decision makes it clear that the registration of colours as trade marks is possible, if clearly defined, and if a colour or combination of colours can be proved to distinguish the products of one trader from those of another.
Undoubtedly if you are attempting to register a single colour as a trade mark, you will have to submit substantial evidence that the mark has become distinctive of your product through use, even if this colour is described by a specific Pantone. If a combination of colours are to be registered then the chances of an application being successful is increased.
The use of colour is a vital tool in the promotion and marketing of products of all types. The Libertel decision shows that the registration of colours as trade marks is possible and such registrations can form a vital weapon in your legal arsenal when dealing with competitors. If you don't consider the possibility of registering 'your' distinctive colour, the way has been paved for others to do so - to your detriment!