The future of colour registration is orange

The European Court of Justice (ECJ) has issued a landmark decision in Libertel Groep BV v Benelux-MerkenBureau, ruling that a colour may be registered as a trademark if, among other things, (i) it has acquired distinctiveness, and (ii) its registration will not create an undue monopoly over a wide range of products or services.

In 1996 Libertel (now part of Vodafone Netherlands) sought to register the colour orange in the Netherlands for telecommunications goods and services. The Benelux Trademarks Office refused the application on the basis that the colour orange lacks distinctiveness. Libertel appealed to the Hague Supreme Court, which referred a number of questions under the Community Trademark Directive to the ECJ for a preliminary ruling.

The ECJ ruled that a single colour may be registered as a trademark provided that:

• it is represented graphically in a way that is "clear, precise, self-contained, equally accessible, intelligible, durable and objective". The colour must be described by reference to international identification codes as a sample of the colour may fade;
  
  
• it has acquired distinctiveness under Articles 3(1)(b) and 3(3) of the EU directive as it is inconceivable, save in exceptional circumstances, that distinctiveness can be demonstrated without prior use, especially where (i) the specification of goods and services is restricted, and (ii) the relevant market is very specific; and
  
  
• it does not distort competition and conflict with the public interest by unduly restricting the availability of that colour to other traders, in particular where the applicant seeks registration for a very broad range of goods and services.

The court also stated that it is for the national trademark offices to examine the application and assess whether the colour mark is distinctive, taking into account all of the circumstances of the case.

Whereas this decision will likely tempt a number of leading companies to consider registering their corporate colour as a trademark, in practice, the onerous conditions set by the ECJ will limit the number of colours capable of being protected.

For background discussion of this case, in which the advocate general reached an opposite conclusion, see Single-colour registration not possible, says advocate general

Joel Smith, Herbert Smith, London