Colours symbolize many things in our daily lives and the
meanings attached to different colours are expressed in various
areas, for example: signs (green for approval and red for
prohibition); emotions (green for jealousy and red for passion and
love); culture (green for money); or authority (blue for the police
and red for ambulances). Colours are utilized to convey messages
and it is clear that the human brain has become accustomed to
identify and associate colours with different categories it
encounters.
Bearing that in mind, the question arises whether a person or
entity can make use of colours per se (i.e., not in a specific
shape, like a yellow circle or a blue square, but yellow or blue in
any form) in order to mark itself and its specific goods and
moreover, whether the said person or entity can acquire the colour
and use it exclusively. In other words, does the possibility exist
for colours to be registered as trademarks?
Over the years, rulings in Israel have dealt with this question in
various ways. Principally, a colour is indeed registerable in
Israel as a trademark. In the famous Kodak case (225/96
Eastman Kodak Company v. Conco Ltd.) the District
Court held that a colour per se is eligible to be registered as a
trademark since it is capable of acquiring secondary meaning and
distinctive character. However, in the Strauss case (10603/09
Strauss Ice-cream v. Noga Ice-cream) as well as in
similar cases, the District Court narrowed the rule and held that
usually, no monopolistic intellectual property protection (based on
trademark or other grounds) may be conferred on a particular single
colour, since colours are in the public domain and should not be
granted exclusively to one person or entity. The court further
clarified that the exception to this rule is in the very rare
situation in which a colour is found to have acquired a secondary
meaning among consumers who identify the product with that
particular colour for an extended period of time, as was held in
the Kodak case, concerning the colour yellow.
Recently, in a decision emanating from an application filed by
"Tnuva" (the largest food concern in Israel) for the
registration of a trademark on a particular shade of gold, the
Commissioner of Patents, Designs and Trademarks, Mr. Ofir Alon,
revisited this issue.
Briefly, Tnuva filed two similar applications (Applications for
Registration of trademarks nos. 271714 and 271715) to register the
colour gold (Panton 871) as a trademark for all goods in class 29
for superior Kashrut ("Mehadrin" - the most stringent
level of kosher supervision). The clientele is a specific consumer
audience - the ultra-Orthodox sector. It should be emphasized that
the application was filed for the colour per se, without limiting
it to a particular form. Indeed, the colour appears on the
packaging of Tnuva's products in different locations and forms,
depending on the design and shape of the specific product.
Tnuva claimed that for more than a decade, it has acted to instil
the association of the gold colour as a mark in the consciousness
of the ultra-Orthodox clientele and that over the years the colour
has become identified with its Mehadrin products.
In a long and detailed decision, the Commissioner rejected
Tnuva's applications on various grounds (for example, because
the mark is not defined in a tangible and permanent manner so it
does not meet the basic definition of a mark and etc.). One of the
main grounds of the decision was that the requested trademarks lack
distinctiveness. The Commissioner stated that [free translation
from the Hebrew] "normally, colour is not perceived by
consumers as identifying the origin of the goods, and moreover, the
use of colours should remain open to public use".
Based on the work instructions of the Israeli Trademark Department,
the Guidelines for Examination of European Union Trade Marks and
the Trademark Manual of Examining Procedure in the USA, the
Commissioner determined that "a trademark which is a colour is
inherently non-distinctive and therefore not eligible for
registration on the basis of section 8(A) of the Israeli Trademark
Ordinance." With regard to the gold colour, the Commissioner
stated that "when it comes to the colour of gold, I believe
that the consumer does not normally see gold as a trademark because
it is used to seeing it as an element of prestige, not as
indicating the source of the goods".
When discussing whether the requested marks acquired a distinctive
character as a result of use, the Commissioner emphasized that
"the burden of proving the acquisition of a distinguishing
character is heavy and significant, and I doubt whether it can be
lifted, and even if it is lifted, whether it is appropriate to
expropriate the colour of gold from the public and to register it
as a trademark in favour of the applicant."
In other words, it seems that the Commissioner's principled
position is clear - colours should not be registered as trademarks
but in extreme cases, in which there can be no dispute that the
colour has acquired a distinguishing character and secondary
meaning, they may indeed be registered.
The Commissioner took the inherent lack of distinctiveness in
colours one step further in the decision in the application of
CHANEL for the registration of the word BEIGE (and not the colour
itself) for "Bleaching preparations and other substances for
laundry use; cleaning, polishing, scouring and abrasive
preparations; soap; perfumery, essential oils, cosmetics, hair
lotions; dentifrices" in class 3 (Application for Registration
of trademark no. 290317 "BEIGE"). As with his conclusion
regarding the registration of a colour per se as a trademark, the
Commissioner determined that "in general, the name of a colour
should not be permitted as a trademark because colour is a feature
of the goods, the consumer does not see the name of the colour as
describing the origin of the goods, and the word must be left open
for public use. In appropriate circumstances, it is possible to
deviate from this rule when it is proved that the mark has acquired
a second meaning, as a source identifier".
Nevertheless, the Commissioner acknowledged one exception to the
aforesaid. The Commissioner determined that the name of a colour
would be registered as a trademark as long as it pertains to goods
that are not related to colour at all: "As an exception to
this rule, it is possible to permit the registration of a colour
name for certain goods, when the colour cannot be seen as
characteristic of the goods, so the consumer will see the name of
the colour as a source identifier and not as a description of a
characteristic of the goods, nor is there an expropriation of the
colour from the public". As an example, the Commissioner
brought the trademark "OPAL BLUE" which was registered
for computer software in class 9. The Commissioner stated that
"colour is not usually a feature of software and the public
does not attribute any importance to colour in the software field
and therefore, the decision of the European Intellectual Property
Office (R664 / 2016-4C) states that there is no prevention to
register the trademark".
In conclusion, the Commissioner recently rejected two trademark
applications - one of a colour per se and the other of a name of a
colour. In both decisions, the Commissioner determined that the
requested marks lacked distinctive character. However, there seems
to be a difference between the two decisions. While the
Commissioner's decision in the Tnuva case indicates that colour
per se inherently lacks a distinctive character for all types of
goods and services, regarding the name of a colour, the position is
more lenient. The name of a colour inherently lacks a distinctive
character in relation to goods and services only that may be
related to the same colour, such as personal care products as
opposed to computer programs, for example. Accordingly, it seems
that the course for registration of a name of a colour as a
trademark is easier than the registration of a colour per se and in
the event that entities consider branding themselves using a colour
or a name of a colour, they must take this into account prior to
commencing registration procedures.
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.