Nestlé applies for registration of yellow colour mark for Class 30 goods

D’ONOFRIO is one of the most recognised trademarks for ice creams in Peru. It is also the name of a company, D'Onofrio SA, founded in 1924 by an Italian immigrant, Pedro D’onofrio. On 1997 D'Onofrio SA was acquired by Société des Produits Nestlé SA, which is now the owner of the D’ONOFRIO mark in Peru.

Nestlé has recently filed an application for the registration of a colour trademark, depicted below, in order to cover ice creams and frozen desserts - among other related goods - in Class 30 of the Nice Classification:

This application was then published in the Official Gazette for opposition.

It is worth noting that D'Onofrio uses a specific yellow colour in the market, in advertising and to identify its distributors (barrow boys and their wheel barrows). The colour is known extensively by Peruvian consumers.

There have not been many applications before the Peruvian Trademark Office for a colour within an outline, even though this kind of applications is allowed by the trademark legislation. Indeed, Andean Community Decision 486 -  the industrial property legislation applicable in the member states of the Andean Community - states in Article 134(e) that a colour within an outline, or a colour combination, may constitute a trademark. On the contrary, according to Article 135(h) of the same statute, a sign that consist of a colour in isolation, without any demarcation to give it a specific shape, may not be registered as a trademark.

In previous proceedings relating to the same kind of trademark applications, the Trademark Office stated that the examination of registrability requires a critical analysis due to the fact that the range of colours is limited. Accepting the registration of a trademark consisting of a colour within an outline could prevent competitors from using such a colour in the future, and the purpose of trademark protection should not be to deprive the market of the full range of colours.

It remains to be seen what the Trademark Office will decide with regard to Nestlé's application.

Medalith Albarracin, BARLAW - Barrera & Asociados, Lima