Turkish Law Blog

To What Extent Trademark Law Should Protect Colours?

Alptekin Köksal Alptekin Köksal/ University of Exeter
02 April, 2019
4006

I. Introduction

Trademarks are used for identification in commercial life to a high degree. It is crucially important for businesses to identify and distinguish their goods from other businesses. As the Court emphasized;

“… the essential function of a trademark is to guarantee the identity of the origin of the marked goods or service to the consumer… A trademark must distinguish the goods or services concerned as originating from a particular undertaking… regard must be had both to the ordinary use of trademarks as a badge of origin in the sectors concerned and to the perception of the relevant public.”[1]

In order to register a trademark, some qualifications are needed to be provided. Relevant provision which is the Trademark Act 1994 Section 32(iii) indicates that a trademark must have a representation at first place.[2] This means a sign must have a representation and it must be an adequate one.[3] In the light of this information, it can be deducted that a trademark could be a name(word), colour, figure, shape, sound or slogan if they represented graphically in the application.

In the past colour marks are seen to be non-registrable since the lack in technology (only black and white printers were available at that time) to represent them. Development in technology and liberalisation in the regulations changed that approach. Application statistics for trademarks shows that usual (traditional) trademark applications are still the majority since the Office for Harmonization in the Internal Market (OHIM) opened in 1996 for registration of community trademarks.[4] Nearly 99 per cent of the applications are for usual trademarks like words or figurative marks; and only 0.5 per cent of them for shapes and 0.05 per cent for colours.[5] Numbers give rise to a question at this point. Is it really necessary to protect colours per se in Trademark law? If so, to what extend?

Colours can be protected directly or indirectly. Indirect protection of colours is registration of a sign which includes words, shapes and also colours together in order to create a fully recognisable trademark.[6] An example for an indirect protection would be the emblem of Mc Donald’s® which includes the letter M, and colours of red and yellow. On the other hand, direct protection for colours is the protection of a colour per se.[7] These kinds of protected colours are named abstract colours and controversy occurs to some extent in the process of registering a colour per se.

Thus, this paper is intended to explain colour protection in trademark law briefly with the aid of relevant case law. First part of the paper will examine the relationship between colours and market in order to make needs for protection clear. Second part will set light to the history of colour marks while looking at US and EU Law. And lastly, scope of the protection and arguments against will be discussed. After all, an implication can be made on colour protection as trademarks.

II. Power of Colours

Researches on the market clearly show that customers choose goods mainly on their visual information. To be more specific, 80 per cent of visual information is actually about colours.[8] In some circumstances, visual information is not that important, yet this situation accepted as rare. Colours generally sustain information about brand and its quality; thus, they are helpful to customers in distinguishing goods.[9] Businesses mainly use colours to advertise and identify their goods. Colours are important nearly in every industry; especially in car manufacturing industries, clothing, pharmaceutical items and even in very cheaply sold cigarette lighters.

There are several researches on colours and trademark protection. A study which was held in University of Loyola, Maryland shows that colours excessively increase brand recognition. By this means, customers generally choose products within 90 seconds of initial viewing.[10] Additionally, approximately 65 to 90 per cent of this selection process based only on colours.[11] As a consequence, businesses act jointly with brand experts to find out which colour can attract attention of customers and which colours are innovative.[12]

As a result, identification by colours has become remarkable. Brands like Mc Donald’s®, Burger King®, Kentucky Fried Chicken®, Domino’s Pizza®, Pizza Hut® generally use red colours on their trademark images and in their restaurants also. These brands are in the fast food industry and red colour evokes food and hunger which also has appetising effects.[13] Moreover, red associated with speed and this is linked with the purpose of fast food perfectly. There many other examples in the market; gold, silver, and rose gold colours are associated with wealthiness, thus lots of brands are now trying to produce their goods in these colours to make a luxury impression on their products. For another instance, colours green and blue are generally associated with bottled water and healthy food in the food industry. In reality, colours only appear after the refraction of light and they are basically reflections which can be seen by our eyes. People even see colours differently which they think are same.

Researches clearly demonstrate that colours have huge effects in our minds. Undertakings have discovered these effects and started to use the power of colours. Consequently, they claim to include colours to their trademarks for the purpose of protection. Therefore, they apply to register colours per se. The main reason behind it can be the protection of goodwill which is created by the colours associated with brands. Unfortunately, differences in national laws created a huge uncertainty in business world and caused controversy before the courts about registrability, enforceability and protectability of abstract colour marks.[14]

III. Jurisdictional Decisions

In US, courts apply a three-step test while analysing a trademark’s registrability or an infringement issue occurred in trademarks.[15] These steps are:

  • Does the mark have a functional purpose?
  • Does the mark distinguish the source of a product?
  • And lastly, are customers confused by the previous mark or another mark?[16]

Before the Federal Circuit’s Owens-Corning decision, the US Supreme Court had never given a positive judgment on abstract colour protection issue.[17] The idea was that colours itself cannot be not in the scope of trademark protection.[18] This traditional approach to colour protection had a big impact on jurisdiction at that time. Functionality of colours, competitive needs, colour depletion, shade confusion and trade dress protection generally invoked against protection claims in US.

However, in 1985, Federal Circuit’s Owens-Corning decision reversed the traditional approach.[19] A pink colour was allowed for trademark registration by the Court. The reason behind it was that, as the Court emphasized, under the new trademark law there is not any obstacles for the protection of colours.[20] More importantly, the Court did not apply colour depletion and shade confusion theories. According to the decision these theories were not able to pose a bar to these kinds of trademarks.[21] Also, the Court accepted these theories as rare exceptions and stressed that if there is competitive needs or is not achieved secondary meaning exists, then colours cannot be protected by law.[22] Unfortunately, after this landmark decision, exceptions of shade confusion and colour depletion were interpreted broadly by some federal courts later and this eventually brought great uncertainty to the application of law.

10 years later, US Supreme Court gave another ruling that colours per se can be registered. This is the second landmark case of US in abstract colour protection as trademarks.[23] Qualitex corporation applied for a colour trademark, and it came before the court. The Supreme Court concluded that colours alone can be registered if they have a secondary-meaning. In order words if they have acquired distinctiveness, then they can be registered as trademarks.[24] The Court also ruled that a colour could be registered if it meets fundamental trademark requirements like other traditional trademarks.[25] However, in Qualitex Case, the Supreme Court avoided to indicate that colours per se could never be distinctive inherently. Nevertheless, its jurisdiction was established around this rule after Qualitex Case.[26] It has also become clear that colours and traditional marks can be registered easily together. However, as colours considered `non-traditional` marks, they must have a secondary meaning, like acquired distinctiveness.[27] After the landmark case, courts in US dealt with colour trademarks cases on a case by case basis whether a single colour or combination of colours have ability to be a sufficient indicator of the source of a product and in fact acts as an adequate indicator.[28]

On the other side of the Atlantic, in European trademark law, the second article of Directive 89/104 EEC and its successor the second article of Directive 2008/95/EC do not exclude colours from protectability, even if the colours are not explicitly included in the list of marks that may constitute a trademark in the article body.[29] These directives intended to change the laws of the Member States relating to trademarks and Member States required bringing their national laws into force to comply with the provisions of the Directive.[30] Same ruling also appears in Article 4 of Regulation No. 40/94 which regulates the Community trademarks.[31] It can be clearly seen from the regulation that single colours or combination of colours are not excluded from trademark registration in Europe at all.

In 1998, the OHIM Board of Appeal concluded that a colour can be protected as a trademark, in the Orange Personal Communications Case.[32] Although the application was partially rejected, the same ruling was given by the Court of First Instance in KWS AG/OHIM Case in 2002.[33] After these decisions, in 2003, a colour trademark dispute came before the CJEU and it became the landmark case for the EU. This case, Libertel Case, brought certainty to some extent for colour trademark disputes.[34] The case was about registration of a colour (orange) for goods and services of a telecommunication company.[35] Before the Court, four questions was asked to the CJEU to find out that whether colours are eligible for registration and in what circumstances they actually are.[36] After that, the CJEU applied the three-step rule; of being a sign, having a graphic representation, and capable of distinguishing in its examination.[37] As a result, the Court ruled that colours per se can be registered.[38] On a side note, in that case, Libertel Group’s colour was not represented clearly, and the colour was found insufficient for registration. Shortly after this decision, the Court ruled that a colour combination could distinguish an undertaking's goods or services can also be registered as a Trademark, in Heidelberger Case.[39]

IV. Scope of Protection

It is explicit that courts and trademark offices are trying to protect colours per se. Power of colours should not be underestimated since they are invaluable for undertakings. However, there are lots of issues surrounding colour protection. Both US and EU courts encountered many problems while determining the protection of colours.[40] Functionality of colours, competitive needs and shade confusion theories are somehow controversial while compared to others -same examination which is generally used for other trademarks can be applied to them also. Thus, these theories might prevent colours per se from registration. According to the non-traditional trademark subcommittee of INTA[41] functionality and competitive needs are not only about colours, and they could be surpassed by general trademark regulations. Yet, colour depletion theory is arguable and neither INTA nor the courts have a persuasive reasoning behind rejecting the theory. 

At this point, colour depletion theory should be discussed briefly. Words and figurative marks seem to be infinite because many different combinations of words, letters, numbers and shapes can be put together.[42] On the other hand, colours have limits due to some identification systems like Pantone System. Pantone or a similar system is required for sufficiency in the requirements of trademark. This leads to the problem that colours would be finite since they are listed one by one.[43] Moreover, humans could only recognise a finite number of colours as a consequence of their eyes and their visible spectrum.[44]

Thus, these two problems give rise to colour depletion theory. This theory states that, if businesses register colours one by one, one day visible and recognisable colour choices would end and new entrants to market would have crucial competitive disadvantages.[45] Although the Court rejected this theory in Qualitex Case, its judgment seems to be unpersuasive.[46] On the other hand, in Europe, the CJEU seems not to reject the theory at all and underlines that consumers have a limited capability in distinguishing products by colours and numbers of distinctive colours are limited also.[47] Average consumer and public in general, only use 12 colours in their daily life and they do not seem to be aware of hundreds of colours in the Pantone System.[48] For instance, nobody would use Primrose Yellow (Pantone 13-0755) or Island Paradise (Pantone 14-4620)[49] in their daily life so registration of all yellows in the end will give a colour oligopoly to a several number of undertakings. This situation eventually leads to unfair competition in markets.

In brief, both EU and US courts state that unfair competition could be avoided during the registration process of colours, but they do not consider the sustainability of colour trademarks in the long-term.[50] In this sense, protecting colours by trademark regulation in the future will narrow appropriate choices which are already limited to an amount of products. Thus, this will be a huge obstacle in front of the new entrants and their ability to reach customers.[51]

V. Conclusion

It is clearly seen from the above discussion that, colours are invaluable for businesses since they have great attributes. Businesses usually use colours in order to reach their customers at the very first step. From a companies’ point of view, colours must be protected by trademark laws obviously. Moreover, if colours start to gain identity over time, they can be indicators of origin after a sufficient time. However, in this case long term outcomes would be detrimental to competition and to companies itself. Allowing protection to colours per se will surely speed up the depletion process of globally acknowledged list of colours.[52] When that happens, new competitors in the market will be in trouble to circumvent these barriers which would be theoretically impossible. On the other hand, colours combined with other signs, like figurative marks, words and shapes should be protected because colours will be helpful to personalize marks of businesses and there will infinite number of combinations which would not deplete in the long term. 

 

Bibliography

Primary Sources

  • Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau, [2003] I-03793
  • Case C-49/02 Heidelberger Bauchemie GmbH v Deutsches Patent- und Markenamt, [2004] ECR I-6129
  • Case T-173/00 KWS Saat AG v OHIM [2002] ECR II-3847
  • Case R 7/97-3 Decision of the Third Board of Appeal of 12 February 1998
  • Owens-Corning Fiberglas Co., 774 F.2d (Fed. Cir. 1985)
  • Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995).
  • Trademarks Act 1994
  • Council Directive 89/104/EEC of 21 December 1988
  • Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008
  • Council Regulation 40/94/EC of 20 December 1993 on the Community Trademarks

 Secondary Sources


[1] Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau, [2003] I-03793, para. 62.

[2] Trademarks Act 1994.

[3] Lionel Bently and Brad Sherman, Intellectual Property Law (4th ed., Oxford University Press 2014), 892.

[4] Lionel Bently and Brad Sherman, Intellectual Property Law (4th ed., Oxford University Press 2014), 892.

[5] Ibid.

[6] Jekaterina Kudrjavceva, Issues Surrounding Registration of Colour Trademarks (RGSL Research Papers, No:9, 2012), 9.

[7] Ibid, 10.

[8] https://www.colormatters.com/color-and-marketing/color-and-trademarks)

[9] Jekaterina Kudrjavceva, Issues Surrounding Registration of Colour Trademarks (RGSL Research Papers, No:9, 2012), 9.

[10] Diane E. Moir, Trademark Protection of Color Alone: How and When Does a Color Develop Secondary Meaning and Why Color Marks Can Never Be Inherently Distinctive [2011] 27/2 Touro Law Review 407, 407.

[11] Ibid.

[12] Ibid.

[13] http://uk.businessinsider.com/why-are-fast-food-signs-red-2015-9?r=US&IR=T.

[14] International Trademark Association, Protection of Color Trademarks, November 1996 http://www.inta.org/Advocacy/Documents/INTAColorMarks1996.pdf.

[15] J. Christopher Carraway, Color as a Trademark Under the Lanham Act: Confusion in the Circuits and the Need for Uniformity [1994] 57/4 Law and Contemporary Problems 243, 246.

[16] Ibid, 247.

[17] Ibid, 247.

[18] Ibid, 247.

[19] Owens-Corning Fiberglas Co., 774 F.2d (Fed. Cir. 1985), 1116.

[20] Ibid, 1118-19.

[21] J. Christopher Carraway, Color as a Trademark Under the Lanham Act: Confusion in the Circuits and the Need for Uniformity [1994] 57/4 Law and Contemporary Problems 243, 250.

[22] Ibid.

[23] Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). 

[24] Diane E. Moir, Trademark Protection of Color Alone: How and When Does a Color Develop Secondary Meaning and Why Color Marks Can Never Be Inherently Distinctive [2011] 27/2 Touro Law Review 407, 407.

[25] Ibid, p. 408.

[26] Ibid.

[27] Ibid.

[28] Ibid.

[29] First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to Trademark Article 2; Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 Article 2.

[30] Jekaterina Kudrjavceva, Issues Surrounding Registration of Colour Trademarks (RGSL Research Papers, No:9, 2012), 10.

[31] Council Regulation 40/94/EC of 20 December 1993 on the Community Trademarks Article 4.

[32] Jekaterina Kudrjavceva, Issues Surrounding Registration of Colour Trademarks (RGSL Research Papers, No:9, 2012), 11, Decision of the Third Board of Appeal of 12 February 1998 in Case R 7/97-3. 

[33] Case T-173/00 KWS Saat AG v OHIM [2002] ECR II-3847, para. 25. 

[34] Jekaterina Kudrjavceva, Issues Surrounding Registration of Colour Trademarks (RGSL Research Papers, No:9, 2012), 11.

[35] Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau, [2003] I-03793, para. 14. 

[36] Ibid, para. 20.

[37] Ibid, para. 23.

[38] Ibid, para. 41.

[39] Case C-49/02 Heidelberger Bauchemie GmbH v Deutsches Patent- und Markenamt, [2004] ECR I-6129, para. 40.

[40] Tiffany Cox, Should Colours be Protected by Trademark Law? [2014] 1 Kent Student Law Review, p. 3.

[41] International Trademark Association.

[42] Tiffany Cox, Should Colours be Protected by Trademark Law? [2014] 1 Kent Student Law Review, 8.

[43] Ibid.

[44] Ibid.

[45] Tiffany Cox, Should Colours be Protected by Trademark Law? [2014] 1 Kent Student Law Review, 9.

[46] Ibid.

[47] Libertel Case (fn.36), para. 47.

[48] Tiffany Cox, Should Colours be Protected by Trademark Law? [2014] 1 Kent Student Law Review, 9.

[49] http://www.pantone.com/fashion-color-report-spring-2017?from=topNav

[50] Cox, 13.

[51] Cox, 13.

[52] Cox, 17.

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