IP/IT Law: Colouring Between the Lines

Observe your current environment. How many colours do you see? We are surrounded by colour – it provides us with beauty, evokes emotions, and we even create associations to colour. And it is these associations which, on multiple occasions, found expression in legal questions i.e. can colour(s) or colour per se be registered as a trade mark?

Libertel Groep BV v Benelux-Merkenbureau Case C-104/01[i]

Dutch telecommunications company, Libertel filed a trade mark application with the Benelux Trade Mark Office for the colour orange. In the space for mark reproduction, they placed an orange rectangle. The simple description of “orange” without an internationally recognised colour code was also provided. The application was refused due to lack of distinctiveness, which Libertel appealed. The Supreme Court of the Netherlands referred several questions to the European Court of Justice (ECJ). These questions were to establish whether a single colour will be able to fulfil trade marks’ distinguishing purpose as well as the circumstance in which colour per se should be registered.

The ECJ set out guidelines for when colour per se could be registered as a trade mark:

1. it must be a sign which can be graphically represented and fulfil the distinguishing purpose;
2. filing a graphical image of the colour to be trade marked is insufficient;
3. the graphical image must be accompanied by a description and/or an internationally recognised colour code;
4. the application must meet the Sieckmann-criteria[ii] – an unequivocal, clear, precise, self-contained, easily accessible, durable and stable form of graphic representation;
5. the colour trade mark’s registration must not create an extensive monopoly which grants an unjustifable competitive advantage to a single trader; and
6. a single colour can only become distinctive through use. In assessing whether a colour has become distinctive, consideration must be given to all the relevant circumstances; avoiding abstract examinations at all cost.

Red Bull GmbH v EUIPO Joined Cases T-101/15 and T-102/15[iii]

In 2002, Red Bull applied to have its blue and silver colours registered as an EU trademark for energy drinks. Its application contained the following description: protection is claimed for the colour blue (RAL 5002) and silver (RAL 9006). The ration of the colours is approximately 50%-50%. The description was accompanied by a graphic representation. The mark was registered in 2005.

Five years thereafter, Red Bull applied for a further EU trade mark in the same class for the same product for the colours blue (Pantone 2747C) and silver (Pantone 877C). This application’s description read: the two colours will be applied in equal proportions and juxtaposed to each other and was accompanied by a graphic representation.  The mark was registered in 2011.

In 2013 the marks were declared invalid as it lacked the required precision and uniformity. Red Bull appealed. The General Court also found inter alia that:

1. To be registered, a colour combination must be (i) a sign (ii) capable of graphic representation and (iii) capable of fulfilling the distinguishing purpose, with its  representation satisfying the Sieckmann Criteria;
2. Juxta positioning two colours in every conceivable form does not satisfy the Criteria. For registration, the colours representation must be in a predetermined, uniform way;
3. Red Bull’s description went further than the graphic representation – allowing numerous colour combinations;
4. Colour marks are intrinsically less precise and thus require a greater degree of precision.

Cadbury’s Purple in Cases – Societe des Produits Nestlé S.A., Case A3/2012/2702[iv]

In 2004, Cadbury applied for UK-registration of the colour purple. The application included a graphic representation, with the application description reading: The colour purple (Pantone 2865C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.”

The application was granted but following several appeals it was revoked.  The court found that the inclusion of “predominant” made the description too subjective, too imprecise, and inadequately clear and intelligible, to be capable of registration.

Cadbury applied for the same mark’s registration in South Africa. The application included two rectangles with the Pantone number. As the colour was applied in the abstract, not indicating how it will be used in relation to Cadbury’s packaging, the mark was found to be unregistrable.

How to colour within the lines

Although colour trade marks are not widely used in South Africa and although the discussed cases are mostly international, it provides guidance which can followed and applied by potential colour trade mark proprietors:

1. Precision, precision, precision: Be precise in what you want, provide your colour(s) Pantone numbers, a graphic representation and as per the Red Bull-case: Colour marks are different from other forms of trade marks; they are intrinsically less precise and thus require a greater degree of precision;
2. Have caution with your wording and graphical representation: Learn from Cadbury (UK-case) and Red Bull, do not use any words which might broaden your monopoly excessively and/or lead to uncertainty as to your mark’s exact scope. Make use of simple rectangles to illustrate the colour, showing exactly how and where the colour(s) will be used by providing shape and contours;
3. Location, location, location: Know and understand the legislation and prominent case law of each country where you wish to register your colour mark. Be certain of the loopholes, potholes and what each trade mark office requires for its applications;
4. The world, unfortunately, is not your oyster: Do not create a monopoly broader than you need. Remember, Libertel’s advice: The registration of a colour as a trade mark must not create an extensive monopoly which in turn grants an unjustified competitive advantage to a single trader;
5. Stick to Sieckmann: When drafting your application, always apply Sieckmann’s guidance. Your mark must be an unequivocal[ly], clear, precise, self-contained, easily accessible, durable and stable form of graphic representation.