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:
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:
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:
This article is for general information purposes and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact us At DKVG Attorneys for specific and detailed advice.
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