The registration of colours

As colour trade marks are not traditional, applications to register colours can be problematic.

As with every trade mark application, colour registrations has to satisfy section 1 of the Trade Marks Act 1994.

The sticking point for many of these applications is the ability to be graphically represented as well as the need for distinctiveness.

The Court of the European Union was called on to give clarity to the situation in the case of Libertel Groep BV v Benelux-Merkenbureau (C-104/01). The CJEU stated that a colour could not be represented graphically with just a sample as this was not sufficiently precise or durable. However with the addition of a description or recognized colour identification code, it would be graphically represented. The court also stated that there is difficulty in a colour becoming distinctive unless consumers became familiar with it over time. The court did highlight that if there is a likelihood of a monopoly developing over a specific colour, the application will be refused.

This case is an example that a colour application does have the ability to succeed but can fall flat if the mark is not distinctive.

A well-known confectionary brand tried to use this case to register a trade mark of its own iconic colour.  In Cadbury UK Ltd v Societe des Produits Nestle SA, Cadburys Ltd tried to register ‘Cadburys Purple’ as a trade mark in relation to its packaging. However the court ruled that the proposed mark lacked the required clarity, precision, self-containment, durability and objectivity to qualify for registration. In addition the CJEU was wary of allowing a monopoly over a popular shade of a widely used colour. Allowing this would go against the principle of fairness and fair trading between competitors.

Therefore it is clear that even with Cadburys UK Ltd resources and standing, an application to register a colour can be very difficult to put through successfully.

If you are looking to register trade mark, get in touch with trademarkroom and let us take your case forward for success!

By Ellis Sweetenham