A grey area? How to register colours as trademarks

A brand’s use of colour can be a strong identifying element, but registering colours as trademarks remains a challenge. Léa Chenain offers some advice.

Last month, it was announced that LMVH had been given regulatory approval of its acquisition of Tiffany & Co, a company as well known for its blue bags and boxes as it is for its premium jewellery.

It may seem surprising that this dazzling turquoise blue, whose brand economic value is clearly very important, is not registered as a trademark in the European Union, despite it being created as a custom colour for Tiffany’s by Pantone (‘1837 Blue’).

Despite the efforts of EU trademark reform to loosen the requirement for non-traditional trademarks by removing the requirement for ‘graphic representation’, it was markedly easier to register a colour as a trademark 15 years ago. Over the years, European jurisprudence had made the endeavour much harder by precisely framing what is – and isn’t ­– eligible for representation.

Strict criteria for registration

The challenge of registering a colour as a trademark within the EU can be traced back to the 2003 Libertel judgement by the Court of Justice of the European Union (CJEU), which has been as rigorous in its rulings on colour registrations since. In particular, the Libertel ruling set out that the average consumer is not able to identify the origin and provenance of a product and/or service by colour alone.

As a result, brand use of a colour needs to meet certain strict conditions to be eligible for trademark registration, including use of one of an internationally recognised identification codes, such as Pantone, Rex or Hal. Applicants also have to prepare a considerable amount of evidence (proof of use) to demonstrate that the mark is unusual or striking enough in relation to the specific goods or services to qualify for registrations (as set out in the EUIPO’s Guidelines for Examination, Part B, section 4, chapter 3).

Acquisition of distinctive character through use

In order to obtain a colour mark, the CJEU also requires the applicant to be able to provide proof of acquired distinctiveness through use of the mark.

The difficulty for brand owners here is that this assessment of distinctive character must be made in a global manner in light of the most relevant elements available to the holder; for example: market share held by the mark, geographical scope, intensity and duration of use of the brand, advertising investment etc.

This condition limits the number of applications for colour marks to those that are already present on the market and enjoying a reputation as a trademark with the relevant public throughout Europe.

French Champagne producer Veuve Clicquot succeeded in registering its orange, for example, because of its share of the market across the EU member states, and the number of adverts and press articles it was able to produce that explicitly referred to the colour when talking about the Champagne (EUIPO cancellation 12033, November 2018).

However, the state-owned public transport operator RATP was refused its historic green jade because the mark was only used in France and not throughout the EU (EUIPO rejection 009766312, November 2011).

What about colour combinations?

The EUIPO is no more lenient when it comes to colour combinations. The position and proportion of the colours must be strictly specified if such a mark is to be eligible for protection and must, in particular, include a ‘systematic arrangement associating the colours concerned in a predetermined and uniform way’.

In other words, if the description of the application for registration simply consists of two or more colours that can be used in all conceivable forms, the application will be refused (as with Red Bull). Instead, the applicant must clearly describe how the combination of colours will be used on the goods or services applied for.

The national approach

Registrations requirements remain strict at national level within the EU, with national courts following the Europe’s lead and rules. When it comes to acquired distinctiveness, however, there is one notable difference, as that use only needs to be established in the territory concerned. As a result, it is generally easier to register a colour at national level, since proof of continuous, intense and long-lasting use is easier to demonstrate in individual countries.

In France, for example, the Lyon Court of Appeal approved registration of AS Clermont Auvergne rugby club’s blue and yellow colour combination (May 2018, No.16/04791: JurisData No. 2018-012623). In its assessment of acquired distinctiveness, the court limited itself to the recognition of the colours by rugby supporters, suggesting that the French courts at least are taking a more flexible approach.

Look at territory first for colour marks

While you will need to show acquired distinctiveness to register a colour trademark at both EU and national levels, you can avoid seeing red by designing your registration strategy with care.  If it is too great a leap to prove that your use of colour is registered throughout the EU, national filings may provide an easier first step to obtaining those all important trademark registrations in the EU countries in which you trade.

For further advice and assistance in this respect, please speak to your Novagraaf attorney or contact us below.

Léa Chenain is a Trademark Attorney at Novagraaf in France.