Trademark Infringement in Colour

Nadaline Webster,

Colour plays an important role in the lifecycle and promotion of brands, making them an instantly recognisable identifier of source that transcends language and cultural difficulties globally. Consequently, the attraction of colours as part of your logo, or indeed as an identifier in their own right, is increasing. However, the registration of a particular colour for your brand is fraught with challenges and even more so on an international stage.

In recent times, brands have struggled to establish or maintain their colour trademarks on both sides of the pond with the US and Europe taking disparate views on the criteria to establish the validity for a colour to act as a trademark for any particular company. A viewpoint largely held in common across many regions is that the registration of any particular colour as an identifier for any particular company in a particular industry or field will necessarily limit the ability of other companies to use colours to distinguish themselves in the marketplace. It is not widely held that the greater interest is served by freely perpetuating this restriction.The point is underlined by the ease with which unwitting infringement can take place with few amongst the general public seemingly aware that any colour they are proposing to use in any capacity may well give rise to legal action. The Raymond Area Rotary Club recently fell foul of just such a situation when their website advertisements for their 4th Annual Thunder Run raising funds for their chosen charities infringed on the orange colour trademark owned by Tough Mudder for similar events.

One of the primary cases around the registration of colours as trademarks in Europe also involves the colour orange. Libertel Groep BV attempted to register a specific shade of orange for telecommunications services with the Benelux-Merkenbureau (The Benelux Trademark Office serving Belgium, The Netherlands and Luxembourg) and were refused. The registration of a colour as a trademark in Europe requires that the colour have a distinctive character for a particular product or service or have acquired such distinctiveness. The court found that while colour does not act as a sign inherently, it can be found to do so in some circumstances. In short, the answer to whether you can register a colour as a trademark in Europe depends!

This does create potential headaches both for businesses, charities and website owners who may be completely unaware of any issues with a particular colour they might choose depending on the market in which they operate. Attempting to police use of any particular colour for the registered trademark owners may also be a challenging endeavour.

On the one hand, there are a limited number of colours and shades available to the world for use which may lend itself to a perception that they belong to everyone. On the other hand, a business that has successfully built a brand and image around a particular colour and also successfully registered a trademark for such, has passed the high standards required for registration. In those circumstances, having achieved such a feat, a certain reluctance to fall foul of risks such as dilution or genericide is understandable.

The criteria imposed internationally around the registration of colours as trademarks (and indeed trademarks in general, given the increasing volumes of applications) is likely to evolve further as successful owners seek to expand protections overseas and more potential owners become desirous of a colour trademark of their very own. Keeping abreast of cases and developments is the best line of defense. 

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