In recent times colours have been increasingly used as trade marks in the marketplace. However, it has traditionally been difficult to protect colours 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 Rights, 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 colour 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
Requirements are set out in the Trade Marks Office Manual of Practice and Procedure issued by IP Australia.
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 v Benelux Merkenbureau (case C-104/01) dated May 6, 2003 the ECJ repeats the criteria from Sieckmann v German Patent Office (case C-273/00) 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 define their colour trademark using an international colour code such as RAL or Pantone. In most cases, a colour trademark will be registered only after an enhanced distinctiveness through use in the EC has been proved.
In the United Kingdom, the High Court of Justice, Court of Chancery held that a colour could be trademarked in Société des Produits Nestlé S.A. v. Cadbury UK Limited (2012).
- ^ 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.
- 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.
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