This article was written in July 2004. There is a chance that the law has changed, or the facts of this article may have been superseded. It is based on UK law.
The use of colour in a product or its packaging is widely recognised as being crucial to building a brand image and marketing and advertising agencies agonise long and hard when deciding which colour, or shade accurately reflect the brand values.
However, there is the question of how traders can protect and stop others from using 'their colour' when it has been chosen, and defend the often hard won goodwill a company has established in the minds of the public by the use of a distinctive shading.
Best form of defence
The best way to defend a trade mark against attack by imitation is by registering it. The Libertel case decided by the European Court of Justice (ECJ) in 2003 clearly established that single colours are capable of acting as trade marks and can be registered providing that they are defined in a sufficiently clear way. This is generally done by using a Pantone Number. If it can be proved that the purchasing public would inherently, or over a period of time, take the colour as distinguishing the goods and services of one trader from those of another, then the colour can be registered.
The Libertel case concerned the issue of single colour trade marks. However, a recent decision of the ECJ dating from 24 June 2004 considered the question of the registration of a combination of colours 'without form or contours'.
The Heidelberger case
On the 22 March 1995, Heidelberger Bauchemie GmbH applied to the German Patent Office for the registration of the colours blue and yellow as a trade mark. The section of the application form headed 'reproduction of the mark' comprised a rectangular piece of paper, the upper part of which was blue and the lower half yellow. The following description of the mark accompanied the application:
"The trade mark applied for consists of the applicant's corporate colours which are used in every conceivable form, in particular on packaging and labels.
The specification of the colours is:
RAL 5015/HKS 47–blue
RAL 1016/HKS 3–yellow."
Registration of the mark was applied for in relation to a list of various products used in the building trade, including adhesives, solvents, varnishes, paints, lubricants and insulating materials.
On 18 September 1996, the German Patent Office rejected the application on the grounds, first, that the sign sought to be registered was not capable of constituting a trade mark and was not capable of being represented graphically, and, secondly was devoid of any distinctive character. However, following the "black/yellow colour mark" decision of the Federal Court of Justice on 10th December 1998, the Patent Office reconsidered its position, accepting that colour marks are in principle capable of acting as trade marks, but the Heidelberger Bauchemie's mark lacked distinctive character. Heidelberger appealed the decision to the Federal Court of Justice, who subsequently referred the matter to the ECJ for guidance.
It will be recalled that the Libertel case made it clear that in order to be registered as a trade mark in the European Union, a mark must overcome three hurdles:
- It must be a sign,
- It must be capable of being represented graphically,
- It must be capable of distinguishing the goods and services of one undertaking from those of other undertakings and ultimately that it does distinguish the goods and services of one undertaking from those of others whether inherently or via use.
Libertel were attempting to register the colour orange in relation to telecommunications services.
It was accepted in the Libertel case that colours are signs. The European Union Trade Mark Directive provides a non-exhaustive list of what can act as a trade mark, including words, logos, and shapes—essentially anything is a sign. Although in Libertel it was held that colours were normally 'simple property of things' and that colours are generally used for their decorative or attractive powers, and did not usually convey any 'trade origin' meaning, it was accepted that colours are capable of distinguishing the goods and services of one trader from those of other traders and do act as 'badges of origin' in commercial reality in certain circumstances.
Defining a colour
However, where Libertel failed was on the second test, a simple definition of the colour orange, as a trade mark was not a sufficiently clear definition to enable the mark to be represented graphically. The definition used by Libertel did not fulfil the requirement established in the earlier Sieckmann decision of 2002 that a trade mark definition has to be clear, precise, self-contained, easily accessible, intelligible, durable and objective. The definition of the colour orange means different things to different people, in short the use of such a definition did not establish with certainty and clarity the scope of protection of the registration sought. However, in Libertel the ECJ made it very clear that the use of widely recognised colour codes (e.g. Pantone definitions) could provide the necessary certainty and clarity of the scope of protection.
So, we are back to Heidelberger. It will be noted that Heidelberger did use recognised colour codes. However, the problem with the Heidelberger definition appears to centre on these seven words in the definition: "which are used in every conceivable form".
In the Heidelberger case the ECJ made this important statement in its guidance to the German Federal Court of Justice:
"Accordingly, a graphic representation consisting of two or more colours, designated in the abstract and without contours, must be systematically arranged by associating the colours concerned in a predetermined and uniform way."
A registration must be unambiguous
The Court found that in order to fulfil its role as a registered trade mark, a trade mark must always be perceived unambiguously and uniformly, so that the function of a mark as an indication of origin is guaranteed. The German authorities had initially doubted that the Heidelberger definition could provide such certainty and that the use of phraseology such as "which are used in every conceivable form" could be interpreted in various different uncertain ways. A registration of a trade mark with such a definition would create uncertainty amongst competitors of Heidelberger and through the courts. Did such a definition protect the colours yellow and blue individually? In what ways were the colours blue and yellow protected and for what uses? The ECJ seems to support such criticisms and it seems likely that when the German Federal Court of Justice makes it final decision on this matter following the ECJ's guidance that Heidelberger's application will be refused.
So what can be learned from the Heidelberger decision? Well the decision confirms the reasoning of the Libertel case. Colour trade marks can be registered, but they must be sufficiently defined by the use of recognised colour codes, such as Pantone indications, and the way in which the colours are to be used and how they are used must also be clearly defined with certainty, durability which are not open to different interpretations. Also Heidelberger backs up the comments made in the Libertel case that in most cases colour marks are not inherently distinctive and can only achieve distinctiveness through use.
The registration of colours as trade marks is undoubtedly possible—both Heidelberger and Libertel have established that important principle—and the registration of colours are a valuable asset to you or your clients. However, be warned attempts to register colours as trade marks undoubtedly will be a long and tough journey. At the outset applications must be clearly defined and, in the absence of evidence of use, may be doomed to failure.
Pinsent Masons has a dedicated Trade Marks & Designs Team, which consists of qualified Trade Mark Attorneys. We can file and prosecute trade mark applications across the globe and conduct searches on potential brands and advise on risks to use in terms of infringement.