What Color Trademarks Bring to Brand Identity
A Badge of Origin
How color trademarks are created, protected, enforced? And how can brands leverage color even without registration? Ralph Cunningham finds out.
We recognize it the instant we see it. That color or combination of colors, that shade, that hue that brings to mind a product or service without even thinking about it. Our favorite cereal, the drink we reach for, or the box of tea bags we throw into our shopping basket would not have the same brand recognition without their colors.
The power of color to generate this response only comes after brand owners have spent significant time and resources to come up with a color or combination of colors that makes you think of them first and leaves you without any confusion about what the product or service is.
Getting to that point is the topic up for discussion in the Trademarking Color: From Iconic Shades to Strategic Brand Identity (Wednesday, 6 May, 11:45–12:45) panel. Practitioners and in-house counsel from the food and drinks and maritime industries will talk about what it takes to get from an idea that could get protection as a color mark, to developing a trademark application for it, to seeing the same mark across a range of products in stores, in designs, or on the side of a more physically substantial object, such as a ship. They will also discuss how brand owners can still use color for brand protection and enforcement even without a trademark.
Moderator Simon Clark, Partner at Bristows (UK); Emma Himsworth KC, barrister at One Essex Court (UK); Mark Hodgin, Chief Counsel, Global Trademarks at Mondelez International (UK); and Bjørg Texel, Lead Trademark Counsel at Maersk Line A/S (Denmark) will look at what brands must do to ensure their color marks act as an integral part of their identification strategy and the associated enforcement challenges.
Color Mark Rarity
Because of the strict criteria that a brand owner must meet to register a single color as a trademark in the United Kingdom or the European Union, the number of successful pure color registrations is small, says Mr. Clark.
“The key requirement is that the color must act as a badge of origin. Since most products and services are always marketed in conjunction with a brand name, it can be difficult to demonstrate to the registries that it is the color alone, rather than the brand name that consumers rely on to identify the origin of the product or service,” he adds.
Applications for color marks also fail if they cannot be represented on the trademark register in a sufficiently clear and precise manner to allow anyone reviewing the register to identify the mark’s scope of protection.
"The key requirement is that the color must act as a badge of origin."
-Simon Clark | Bristows (UK)
Court Requirements
Setting a precedent for trademark law in the United States, the Supreme Court ruled more than 30 years ago, in the Qualitex case, that businesses are entitled to register a single color as a trademark protection when it has developed secondary meaning and does not serve a functional purpose.
Pinning a date on when the U.K. or the E.U. allowed the registration of their first color trademarks is difficult, but litigation, such as the European Court of Justice decision in the Libertel case in 2003, concerning the color orange for telecommunications services, and the UK case between Cadbury and Nestlé over the use of the color purple in chocolate packaging are significant pointers about what both jurisdictions have come to allow.
A combination of colors can also form a color mark if the combination is also represented in a clear and precise manner. This is necessary because, according to Mr. Clark, an unfair competitive advantage could be the result of uncertainty in the market about exactly what is being protected, and what would and would not infringe the trademark.
Brand Protection Without Color Mark
Brand owners can still use color to protect and defend their product or service from competitors and infringers, even if they can’t secure trademark protection for it.
“Effective action can be taken by businesses without any registered trademarks if they can demonstrate that they have sufficient goodwill in the use of a particular color or colors in association with their products or services,” he concludes.
