Color trademark

A color trademark (or colour trademark) is a non-conventional trademark where at least one color is used to perform the trademark function of uniquely identifying the commercial origin of products or services.

In recent times colours have been increasingly used as trade marks in the marketplace. However, it has traditionally been difficult to protect colors as trademarks through registration, as a colour as such was not considered to be a distinctive 'trademark'. This issue was addressed by the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rightsref|TRIPs, which broadened the legal definition of trademark to encompass "any sign...capable of distinguishing the goods or services of one undertaking from those of other undertakings" (article 15(1)).

Despite the recognition which must be accorded to color trademarks in most countries, the "graphical representation" of such marks sometimes constitutes a problem for trademark owners seeking to protect their marks, and different countries have different methods for dealing with this issue.

Registration of colour marks in different jurisdictions

Australia

Requirements are set out in the "Trade Marks Office Manual of Practice and Procedure" issued by IP Australia [http://xeno.ipaustralia.gov.au/D:/Exmanual/pt20_29/part21.htm#5] .

European Union

In the European Union, Article 4 of "Council Regulation (EC) No. 40-94" of 20 December 1993 ("signs of which a Community Trade Mark may consist") relevantly states that any CTM may consist of "any signs capable of being represented graphically...provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings". In "Libertel Groep" vs. "Benelux Merkenbureau" (case C-104/01) [http://www.copat.de/markenformen/c-104_01en.pdf] dated May 6, 2003 the ECJ repeats the criteria from Sieckmann v German Patent Office (case C-273/00) [http://www.copat.de/markenformen/C-273-00EN.pdf] that graphical representation, preferably means by images, lines or characters, and that the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.

This definition generally encompasses colour marks, and therefore an applicant for a CTM or a national trademark in the EC may use define his colour trademark using an international colour code such as RAL, Pantone and so on. In most cases, a colour trademark will only be registered after an enhanced distinctiveness through use in the EC has been proven.

In the European Union, colours have been granted trademark protection when used in specific, limited contexts such as packaging or marketing. The particular shade of turquoise used on cans of Heinz baked beans can only be used by the H. J. Heinz Company for that product. In another instance, BP was granted the exclusive right to use green on signs for petrol stations. [http://news.bbc.co.uk/2/hi/uk_news/magazine/3555398.stm]

United States

Originally, color was considered not a valid feature to register a trademark "Leshen & Sons Rope Co. v. Broderick & Bascom Rope Co.", 201 U.S. 166 (1906). Later. the United States Supreme Court in the case of "Qualitex Co. v. Jacobson Products Co.", 514 U.S. 159, 165, 115 S.Ct. 1300, 1304, 131 L.Ed.2d 248 (1995) reversed itself and ruled that a color is registrable as a trademark under the Lanham Act, subject to conditions. Whether a color can serve as a trade mark depends on the visual perception of the viewer. Normally, the distinctiveness through use must be shown.

ee also

*Non-conventional trademark

External links

* [http://www.copat.de/markenformen/mne_markenformen.htm Welcome to the non-traditional Trade Mark Archives] — the non-traditional trade marks archives of Ralf Sieckmann include i.a. a data base of trade marks in the field of colour, sound, smell, motion, hologram, aroma, texture. The 2007 version of colour trade marks is available here [http://downloads.brainguide.com/publications/PDF/pub61869.pdf]
* [http://www.brainguide.us/ralf-sieckmann The 2008 version of Non-Traditional Trade Mark Archives under publications]
* [http://www.intellectual-property.gov.uk/faq/trade_marks/index.htm United Kingdom Government guide to trademarks]
* [http://www.out-law.com/default.aspx?page=369 Article on the registration of colour marks before the European Court of Justice]

Notes

# TRIPs is an international treaty which sets down minimum standards of protection and regulation for most forms of intellectual property in all member countries of the WTO.