Trade mark tips – May 2014Print publication
Colours can be registered as trade marks. Under the Trade Marks Act 1994 and the Community Trade Mark Regulation, any sign which can be represented graphically and which is capable of distinguishing the goods or services of one undertaking from those of another is prima facie registrable as a trade mark.
For example, Heinz has successfully registered the turquoise colour used on its baked bean tins.
Registering a colour as a trade mark is not straightforward; in October last year, the Court of Appeal gave judgment for Nestlé in its challenge to Cadbury’s attempt to register the purple colour of its chocolate bars. The Court said that the application lacked clarity because it used the words “The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”. This wording, particularly the use of the word “predominant”, opened up the possibility of a number of colour combinations which Nestle argued was too vague to enable registration. The Supreme Court has refused Cadbury permission to appeal.
In January, the UK Intellectual Property Office published a practice note confirming that, where a mark registered in black and white form has been extensively used in a particular colour or colours, the court can take this into account when it is considering issues of likelihood of confusion, detriment and unfair advantage. It also says that in infringement proceedings, it may be relevant that the later mark has been used in particular colours (although, when a mark is registered in black and white and used in colour, but not to the extent so as to build up distinctive character, the colour aspect will not be considered as a relevant factor by the courts).
The Walker Morris Trade Marks and Designs Unit has a wealth of experience in handling trade mark applications, including “non-traditional” marks, such as colours, where very particular attention needs to be paid to the framing of the application.