Colour combination mark discussion lead to a registration deemed invalid

Many famous brands have built up their reputation in their industry through a strong identity.

The majority of these identities involve colour.

With only so many colours to go around, a combination seems a good idea to create a unique image.

However, the protection of this colour identity has been under discussion for a long time and a recent High Court decision gave some clarity to whether a colour combination could in fact be registered as a trade mark.

This was an application by Sandoz to invalidate a trade mark registration made by Glaxo Wellcome for the colours of their newest inhaler. The mark description was:

“The trade mark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler."

Sandoz’s argument was that the mark did not disclose a sign and it failed to comply with the requirements that it had to be “graphically represented”. It therefore shall be deemed invalid.

Glaxo Wellcome counter argued this by pointing out a previous court decision where a colour combination was deemed capable of being a trade mark, Heifrlberger Bauchemie. This case was also cited as a reason why Red Bull should protect their blue/silver combination.

Following this, Glaxo states their registration is valid.

Both arguments were considered by HJH Hacon in the High Court who ruled for Sandoz. He stated that while Heidelberger Bauchemie can be reconciled as it merely found that a colour combination could be a trade mark, but it confirmed that the other requirements needed to be complied with, that the Glaxo mark did not.

He believed that it was unclear what the form and meaning of the mark was and therefore deemed invalid.

Following this, it has become even more unclear what needs to be done to make a successful application for a colour combination. Therefore, Red Bull may have a battle to make a successful application for their newest blue/silver application.

For more guidance and advice on how to kick-start your trade mark application, contact Jane at The Trademarkroom.

By Ellis Sweetenham