Colour per se registered as a trademark for the first time

The Danish Patent and Trademark Office (PTO) has allowed the registration of a trademark consisting of a colour per se for the first time. Danish pump manufacturer Grundfos successfully registered its rusty red colour as a trademark (Registration VR 2011 00155).
Prior to this landmark decision, several applicants had attempted to register a colour per se as a trademark with the Danish PTO, without success - for example, Whiskas (purple), Post Danmark (red) and Uncle Ben's (yellow).

While the Danish PTO used to refuse to register colour marks on the grounds that they lacked distinctive character, the Office for Harmonisation in the Internal Market took a different approach and accepted a number of applications for the registration of colours per se. Some of these registrations were based on acquired distinctiveness.
Arguably, the Danish PTO's approach to the registration of colours per se made sense because such registrations can provide an extensive monopoly. Given the natural limitation of the number of colours that can be distinguished by the human eye, granting a company the exclusive rights to use a colour may have a far-reaching impact. If companies are prevented from using certain colours in the marketing of their products and business, it may have a harmful influence on competition.
In Libertel (Case C-104/01), which concerned an application for the registration of the colour orange, the European Court of Justice emphasised the importance of having a fair market, in which companies have a fair chance to market themselves. The judgment further stated that the registration of colours per se is acceptable only under certain conditions.
It will be interesting to see whether the registration of Grundfos' colour mark is followed by other similar registrations, and what effect such registrations will have. Under Danish law, business identifiers - including colours - may be protected under the Marketing Practices Act, which appears to provide suitable protection, even without registration.
One of the challenges posed by the registration of colours is the requirement that the mark be represented graphically. The graphic representation of a colour may change over time or may vary when viewed on different computer screens or when printed by different printers. This has already been an issue in Danish court practice (see Case UfR 2008.2086OE). The use of recognised colour codes may be useful to counter this problem.
Another problem is the expectation that one can search for a trademark registration in the official database and see what the mark actually looks like when used. With regard to colour marks, one cannot see what the mark will look like when used, and the scope of protection is difficult to assess. Can the trademark owner prevent others from using the colour in question in the decoration of their products? How about business papers and signage?
Importantly, each application will have to be examined on its own merits. At this stage, it can be concluded that Denmark has joined the group of European countries where the registration of colour marks is actually possible, but based only on extensive use and acquired distinctiveness. Nevertheless, a common European approach to the issue of colour marks is probably not to expected in the foreseeable future.
Lisbet Andersen, Bech-Bruun, Copenhagen

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