Colour trade marks: another purple patch?

The issue of colour trade marks rears its head from time to time. In theory, it’s very simple – a colour (or a colour combination) can function as a trade mark and can be registered as a trade mark. But many things are great in theory.

We’ve discussed colour trade marks in previous articles. Here’s a short summary.

South Africa

In the South African Trade Marks Act, the definition of the word “mark” makes specific reference to colour. So, a colour or a combination of colours can be registered as a trade mark – you’d surely expect nothing less in the rainbow nation! But it’s certainly not that straightforward.

Years ago, Cadbury (who have a very strong interest in colour trade marks) failed in an attempt register the colour purple as a trade mark in respect of its chocolate confectionery. This case never went beyond Registry level.

European Union

In the EU, the issue of colour trade marks  has been addressed by the courts. In the famous Libertel case, the EU’s highest court held that a colour can be registered as a trade mark. However, the court stated that for registration the trade mark must be “represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”

United Kingdom

In the UK, the issue of colour trade marks has been addressed on several occasion. In the case of Glaxo v Sandoz, the court had to determine whether a trade mark registration was valid – the trade mark showed a representation of a purple-coloured inhaler, together with a description reading that 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”. Unsurprisingly, the court said no, because the description wasn’t sufficiently clear, precise, and unambiguous.

Then there was the famous Cadbury case. The issue here was whether an application to register the colour purple (Pantone 2685C) as a trade mark for chocolate should be allowed. The court said no on the basis that the application wasn’t precise enough – the description spoke of the colour being the “predominant colour” of the packaging. This, said the court, lacked “the required clarity, precision, self-containment, durability and objectivity to qualify for registration”.

Source: Wikimedia Commons

The latest Cadbury case

The most recent UK case is Societe des Produits Nestle S.A. v Cadbury UK Limited, where Cadbury filed applications to register three new colour trade marks. Each application specified the Pantone number (2685C) and offered the following descriptions/explanations:

• The colour, Pantone “applied to the whole visible surface of the packaging of the goods” (referred to as trade mark 362).
• The colour Pantone “applied to the packaging of goods” (361).
• The colour Pantone ‘shown on the form of application’ (822).
  
  

Nestlé opposed these applications, arguing they were not signs (trade marks).

The UK Registry

The Hearing Officer dismissed the opposition against the first one (362), but upheld the opposition against the other two, 361 and 822. The case went on appeal.

The High Court

In the High Court, Judge Meade upheld the appeal on 822, which the judge felt was clear and represented a single colour, namely the colour purple. But the judge dismissed the appeal on 361 because, in his view, the potential ways to apply the colour are unlimited.

The effect is that two of the three applications are entitled to proceed to registration.

Some final observations

In his judgment, Judge Meade made some observations that seem to be aimed at bringing some clarity to the issue of colour trade marks. He said this:

• “The sign is the colour, no more no less. This is a single thing conceptually.”
• “The use of the colour is use of the same sign when used on packaging, on business documents, on advertising or indeed on the goods themselves. There is not a different sign merely because use takes place in a different context.”
• “Ambiguity/multitude of forms is let in by wording like ‘predominant’ but is not let in by a sign which is a single colour per se.
• ”It’s not always easy protecting colours through trade mark registrations but it’s not impossible either.

--

Read the original publication at ENSafrica.