Lack of reliance on colour precludes registration for oil mark

United Kingdom

In Fuchs Lubricants (UK) plc v Alexander Duckham & Co Limited, the Patent and Trademark Office has rejected the registration of green as a colour mark for motor oil. The hearing officer held that the applicant, Duckhams, had failed to establish that the colour mark had acquired distinctiveness through use.

Duckhams applied to register a mark consisting of the colour green under the standard Pantone 3453. Fuchs Lubricants (UK) plc filed an opposition, mainly on the grounds that the mark lacked distinctiveness. Fuchs submitted extensive evidence to support its claims that:

  • it, and other oil manufacturers, also have or used to have green oils on the market;

  • oil is purchased by reference to its name, not its colour;

  • monopolizing the green colour could lead to consumer confusion and create difficulties if the industry decided to colour code for health, safety or environmental reasons; and

  • colour is not a physical property but a human sensation. For this reason a Pantone sample would be inadequate to define the colour of oil.

The officer found that Duckhams's evidence, which centred on establishing the reputation of its green oil, was insufficient because:

  • Duckhams's promotional activity had steadily decreased during the period prior to the date of the application;

  • Duckhams had failed to establish that consumers were unaware of other green oils on the market;

  • the green elements of the company's promotional material were not evidence of use of the mark but rather means of persuading the public to pay attention to the colour of the oil; and

  • Duckhams had not shown that its advertising had had the desired effect.

In particular, the hearing officer pointed out that, although Duckhams may have been able to establish that the average consumer of engine oils is aware that it produces green engine oil, it had not shown that the public takes colour into consideration when choosing engine oil.

Accordingly, the application was refused.

Chris McLeod, Hammonds, London

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