Is a colour capable of constituting a trade mark?
In Libertel Groep BV v. Benelux Merkenbureau the ECJ considered whether a mark consisting of a single orange rectangle and described as "orange" without reference to any colour code was devoid of distinctive character within the Trade Mark Directive (the "directive").
Whether a colour is capable of constituting a trade mark depends on the following requirements:
(i) can a colour be a sign? It should not be presumed that a colour constitutes a sign but if it is used in relation to goods or services it could do so.
(ii) is a colour capable of graphic representation? The mark needs to be clear, precise, self-contained, easily accessible, intelligible, durable and objective (Sieckmann). A mere sample of a colour will not be enough as the colour may fade with time. A sample together with a verbal description may satisfy the requirement depending on the circumstances. A sample with a verbal description and reference to an internationally recognised consistent identification code is more likely to meet the requirements.
(iii) is a colour capable of distinguishing goods services Although colours possess little inherent capacity for communicating specific information this does not mean they are incapable of distinguishing.
Questions and Answers
The ECJ was considering questions posed by the Hoge Raad (High Court of the Netherlands):
When assessing distinctiveness of a specific colour, must account be taken of a general interest in availability of that colour?
The availability of colours per se for use by all is an important consideration in determining their capacity to distinguish. In reaching this decision the ECJ considered the following points:
(i) a trade mark should be viewed in the eyes of the reasonably well informed and observant average consumer (Lloyd Schuhfabrik). His/her capacity to distinguish colours is limited which limits the numbers of different colours available as trade marks;
(ii) the Directive must be read in line with the EC Treaty’s objective to maintain undistorted competition;
(iii) a trade mark gives its owner a monopoly to use that mark in relation to certain goods/services;
(iv) registration of trade marks may be refused for public interest reasons, e.g. geographical names (Windsurfing Chiemsee) and functional shapes (Philips);
(v) the limited number of colours effectively available would allow one undertaking to exhaust the entire range of available colours;
(vi) the greater the number of goods or services for which the registration is sought the more compelling the reason to leave the colour available for all to use.
Can a single specific colour to acquire a distinctive character for certain goods/services?
A finding of distinctiveness without any prior use was almost inconceivable. In commercial practice a colour itself is not generally used as a means of identification. Consumers do not make assumptions about the origin of goods based on colour. However, the ECJ did state that by use a colour can come to identify the goods/services of one particular undertaking. In this respect distinctiveness is a matter for evidence.
In what circumstances does a specific colour possess such a distinctive character?
A colour will possess a distinctive character if the relevant public recognise the mark as identifying the goods/services as originating from a particular undertaking.
Does it make any difference if registration is sought for a wide range of goods and/or services?
The range of goods or services for which the application is sought is relevant in assessing distinctive character and whether registration would be against the general interest.
Should consideration of whether a sign possesses distinctive character be in the abstract or in the light of all the facts?
The consideration of distinctiveness must be in the light of all the facts. The Directive must be compatible with Article 6 of the Paris Convention which states: 'In determining whether a mark is eligible for protection, all the factual circumstances must be taken into consideration, particularly the length of time the mark has been in use'.
Conclusion
A colour may have a distinctive character within the meaning of the Directive provided it can be graphically represented in a clear, precise and durable manner. This requires more that a mere reproduction of the colour on paper. A description of the colour by an internationally recognised identification code may be enough.
In assessing distinctiveness, the general interest of not granting monopoly rights to a certain colour is relevant as is whether the relevant public can identify the origin of the goods or services from the mark and distinguish them from other undertakings.
Each application will depend on its circumstances but an application covering a large number of goods or services will be critically examined.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.
