The colour issue simply refuses to go away. We recently reported on how a US appeals court held that Christian Louboutin's US trade mark registration for red-soled shoes was valid because the colour had become associated with the designer, in other words it had come to denote origin. The court rejected the finding of a lower court that colour cannot function as a trade mark in the fashion industry because colour plays such an integral part in that industry. But it did hold that the registration had to be limited to a red sole that contrasted with the colour of the remainder of the shoe. Which meant that Louboutin's competitor, YSL, which was selling an all-red shoe, was not infringing the registration.
Prior to this, Louboutin tried to persuade a French court that the company Zara was infringing a trade mark registration that Louboutin had for red-soled shoes in France. The French court rejected the claim because it felt that the trade mark registration was too vague, as it didn't specify a particular Pantone number. Which leads us on to a very important point. The trade mark authorities in Europe - who have a great deal of experience of colour and other so-called 'exotic' marks - are quite particular when it comes to these things. They say that not only must the colour or other feature that's supposed to be a trade mark be capable of distinguishing the product of one company from that of another, but it must be possible to represent that feature in a graphic form. And the mark that is lodged must be very clear. Or, to use the words of the courts, it must be 'clear, precise, self-contained, easily accessible, intelligible, durable and objective'.
What does this mean in practice? Well, the European authorities have, over the years, had to deal with some weird and wonderful cases. For example:
- Sound trade marks – think sounds like the roar of a lion or Tarzan's yell. As a result of the famous Shield Mark case – which dealt with a few bars of Fur Elise together the sound of a cockcrow (hard to imagine, I know!) - it seems that a sound mark needs to be represented by way of musical notations or a sonogram (spectrogram).
- Smell trade marks. In the Sieckman case- which dealt with a scent described as 'balsamically fruity with a hint of cinnamon' - the European court held that the requirement of a graphical representation is not satisfied by a chemical formula, a written description, or a deposit of an odour sample. In fact, it's not even satisfied by a combination of these three. But it didn't say what is required. Smell trade marks are probably a non-starter.
- Colour trade marks. A famous example is Veuve Clicquot's registration for the colour orange for champagne. There have been various cases on colours, including the case of Libertel (also orange,) and the Heidelberger Bauchemie case. The gist of the decisions is that there must be a colour representation, a description of the colour in words, and preferably a Pantone number. In the case of a colour combination, there must be a spatial limitation and a systematic arrangement of the colours concerned.
But even if you take heed of these decisions and guidelines, you're still not guaranteed a smooth ride. Cadbury discovered this when it applied to register the colour purple as a trade mark in the UK. The application was very specific – it covered 'chocolate in bar and tablet form', and it was for the colour represented by Pantone 2685C 'applied to the whole visible surface, or being the predominant colour applied to the whole of the visible surface of the packaging'. The application was accepted because Cadbury was able to show that the colour had been used in relation to the goods on a very large scale, and that it was associated with the product. But Nestle opposed the application, arguing that the use of the expression 'predominant colour' introduced uncertainty – it was subjective, indeterminate, and it allowed for alternatives. The matter ended up in the High Court.
In a less than satisfactory judgment, the judge accepted that the term introduced a measure of uncertainty, but no more uncertainty than exists with any other registration of this kind. And, as the highest court in Europe has made it clear that colour trade marks are possible, there was no reason for him to refuse this one. He did make it clear however that, as far as he was concerned, the use of the term 'predominant colour' did not mean that the mark covered a combination of colours. Neither did the description present alternatives (i.e. whole or predominant). He added the by now customary warning that courts and trade mark authorities must be very wary when it comes to things like colour trade marks, saying: 'Unless the registration of trade marks is kept firmly in its proper sphere, it is capable of creating perpetual unjustified monopolies in areas it should not.'
What does this judgment mean for South Africa, where the trade mark authorities actually refused an application by Cadbury to register the colour purple a number of years back? UK judgments are, of course, not binding on our courts but they are persuasive. Which means that companies should probably be as clear and specific as they can be when it comes to registering colours.
What the judgment probably won't do is persuade the Advertising Standards Authority (ASA) that it should become better disposed towards colour trade marks. The ASA has made it clear on more than one occasion that it does not feel that colour can be monopolised. A few years ago it rejected an attempt by iBurst to claim a monopoly in the colour orange, and in a very recent decision it held that Canderel did not have exclusivity to a colour combination of red and yellow in the sphere of sweeteners. In both cases, the ASA's reasoning was that the Code is aimed at protecting original intellectual or creative thought, and that colour does not qualify.
Colour trade mark registrations remain an option for South African companies. But any application needs to be considered very carefully.
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