Most Read Contributor in South Africa, September 2016
Recent trade mark decisions in Europe highlight just how
difficult it can be to protect colour through trade mark law.
In the recent UK case of Glaxo v Sandoz, at issue was
the validity of a registration for a trade mark that 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
Unsurprisingly, the court held that the registration wasn't
valid. The reason: it wasn't sufficiently clear, precise and
unambiguous and all those other good things that the courts and
Trade Mark Offices have been requiring ever since the famous
decision of Libertel. In this case, the European court
said that a colour can be registered if it can be "represented
graphically in a way that is clear, precise, self-contained, easily
accessible, intelligible, durable and objective".
In the case of the purple inhaler, however, there was "no
strict congruence between the visual representation and the
description". So, how was it to be interpreted? As the judge
said, there is "no automatic precedence between the visual
representation of the trade mark and its description". What
judges need to do is interpret the trade mark as best as they can.
What judges won't like are loose expressions like
"significant proportion" and "remainder", which
are potentially infinite. What judges will like are certainties
such as shape and contour.
In a recent German case, however, the court found in favour of a
company claiming colour. The case involved the banks Sparkassen and
Santander, and the issue in question was the validity of a trade
mark for the colour red (without contours or limitations) for
banking. The court held that the registration was fine because a
consumer survey proved acquired distinctiveness – in Germany,
a survey must apparently show that the colour is seen as a source
indicator (and not merely as decoration) by more than 70% of those
We have discussed colour trade marks in a number of previous
articles. There was the famous UK
Cadbury case, in which an application to register the
colour purple (Pantone Code 2685C) for chocolate failed because the
description referred to the fact that the colour formed the
"predominant colour" of the packaging, which the court
felt wasn't sufficiently precise. The court said that the trade
mark lacked "the required clarity, precision,
self-containment, durability and objectivity to qualify for
registration". It felt that the wording of the Cadbury trade
mark in fact covered multiple trade marks because of the implied
reference to other colours. It said this:
"To allow a registration so lacking in specificity, clarity
and precision of visual appearance would offend against the
principle of certainty. It would also offend against the principle
of fairness by giving a competitive advantage to Cadbury and by
putting Nestlé and its other competitors at a
We've also discussed
BP and how the company failed to get green (Pantone Code 348C)
registered in Australia because it had failed to prove acquired
So, what about South Africa? It may be possible to enforce
rights to colour through the law of passing-off, and even by using
the passing-off style clauses of the Advertising Standards
Authority ("ASA"). Although the ASA
generally doesn't show much appetite for colour claims, in a
recent decision involving two big beer brands, it accepted that
the one had rights to a combination of silver and green.
As for trade mark registration, the definition of the word
"mark" in the South African Trade Marks Act makes
specific reference to colour. Many years back, Cadbury failed in an
application to register the colour purple, but this matter never
went beyond the registry, and the application was seemingly
dismissed because there was insufficient proof that the colour had
become distinctive of one company's chocolate products. As far
as I know, there hasn't been a High Court decision on colour
trade marks in South Africa.
In my view, the important thing is to be as precise a possible
– a Pantone code, consistency between the drawing or
representation and the wording, and absolutely no imprecise words
like "predominant" or "significant". It's
worth bearing in mind that there is a great deal at stake with
colour trade mark registrations and that the authorities are
rightfully circumspect. As the UK Court of Appeal put it in the
"As the registration of a trade mark creates a form of
intellectual property conferring a potentially perpetual monopoly
in the mark and excluding everybody else from use in various ways,
the point of principle has some public importance."
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
It has always been the practice of the Industrial Property Institute of Mozambique to prohibit the refiling of trade marks that have been finally refused, which has posed a serious obstacle to trade mark applicants...
As reported in the market updates section of this newsletter, the UAE Ministry of Economy recently reviewed the fees charged by its various departments, including the Trade Mark, Patent and Copyright Office.
Managers responsible for ensuring that an organisation’s intellectual property rights are protected often believe that the organisation automatically owns all intellectual property rights arising from the work of its employees.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).