Colour marks held to be registrable only in exceptional circumstances

European Union
In KUKA Roboter GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-97/08, September 13 2010), the General Court has stated that a colour per se, without any prior use, will be considered to be sufficiently distinctive to qualify for registration as a Community trademark (CTM) only in exceptional circumstances.

Applications for the registration of trademarks consisting of a colour per se, or a combination of colours, constitute a very small proportion of all CTM applications. Nevertheless, this type of trademark attracts considerable attention from a marketing perspective and presents a number of interesting legal issues.
 
One issue is the identification of the mark through a graphic representation. A colour sample filed with the application may be discarded, fade over time or change its appearance through scanning or when viewed on a computer screen. Therefore, a colour code indication, in addition to a colour sample, may be useful. There is, however, no formal requirement to provide a colour code indication.
 
Another issue is the interpretation of the content of the CTM Register. Where a CTM consists of a colour per se, the register does not reveal how the registered mark will look when used. Accordingly, competitors may encounter difficulties when using the register to assess whether they may be infringing a colour mark. Moreover, there may be doubts as to how the use requirements may apply to a colour mark. However, perhaps the most pertinent question is how to register a colour mark in the first place.
 
The present case concerned a CTM application for a shade of orange, which covered goods in Class 7 of the Nice Classification (robots). The trademark was represented as a colour sample, without any colour code indication:

The examiner and the Fourth Board of Appeal of OHIM both held that the mark was devoid of any distinctive character. The applicant appealed to the General Court.
 
The court first noted that the registration as a CTM of a shade of orange would tend to prohibit competitors from using any shade of orange, as a likelihood of confusion might be demonstrated with regard to similar shades or colours. In light of the limited number of colours available, a monopoly over a certain colour might lead to the entire range of available colours being quickly used up. This would be contrary to the general interest in the availability of colours for competitors not being unduly restricted
 
The court further held that the applicant had not demonstrated that:

  • there were exceptional circumstances to the effect that the colour applied for would be capable of indicating the commercial origin of the goods; and
  • a monopoly in the colour applied for would not create an unjustified competitive advantage for the proprietor of the mark.
The applicant’s arguments that the mark was intended for use in advertising and promotion only, and that registration would not restrict competitors from freely choosing colours to be applied to their robots, were unsuccessful.
 
The decision seems to confirm that CTM applications for colour marks will be refused in most cases if there is no acquired distinctiveness through use.
 
Given the questions raised with regard to the protection of colour marks, and the difficulty in getting these marks registered, one may consider whether colours per se are suitable for trademark registration at all. Instead, it may be more appropriate to consider protecting colours under the unfair competition or marketing practices regulations, along with protection of trade dress - as colours often constitute an important element of trade dress.

Lisbet Andersen, Bech-Bruun, Copenhagen

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