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Tuesday, 6 December 2011

Colour Marks As Trademarks

In modern day marketing colours have become a very important tool for the purpose of selling their goods. Nowadays colours can differentiate the various goods and services available in the market. Registration of single colour as a trade mark has always been a tricky business in any jurisdiction be it the EU, India or the United States
Under European Law there is no real restrictions placed on what can be a trade mark, as long as it falls under the broad definition of a trade mark laid out under Section 1 of the TMA. “While this definition is broad and does not exclude colors (or indeed, any other unconventional marks such as scents and sounds), it is the two main elements of the definition (graphic representation of the mark and distinctiveness) that have caused the courts to be reticent in recognising colours as being capable of trademark protection”[1] .With regards to colours the distinctiveness issue is the biggest hurdle to overcome as colours are limited in number and only refer to a characteristic of a product . Colours can normally be  registered as trade marks in exceptional cases only and only if they are used extensively and have  acquired  distinctiveness Thus one of the biggest arguments against the registration of colours is that no one should be allowed a monopoly over a single colour . This is known in the US as the theory of depletion of colours, was until 1995 the main stumbling block under US law to grant protection for colours and, although not called such in Europe, has influenced many European decisions, at least until recently. In India the definition of a trade mark only refers to a combination of colours so the problem arises if an applicant wants to make an application for a single colour.

European Union

In the Libertel[2] case the protection of single colour as a trademark came before the ECJ. In this case the colour orange was sought to be registered for telecommunications goods and services. The mark comprised of an orange rectangle and was accompanied by the description orange, without any reference to a colour code. The ECJ observed that a mere sample of colour would not be sufficiently durable; it further observed that a written description of a colour may suffice but it would depend on the description and the circumstances of the case. Using an internationally accepted colour code to design the colour would constitute graphical representation which is precise and stable. It was also stated that a sample of the colour along with a written description would suffice as long as it met the general criteria of clear, precise, self contained, easily accessible, intelligible and objective.

After the Libertel case the United Kingdom adopted the approach of single colours being considered to be graphically represented if it was filed in the form of a written description along with a relevant code of an internationally recognised colour code identification system such as RAL,Focoltone or Pantone[3]

In 2004 in the Heidelberger[4] case the ECJ confirmed its ruling in the Libertel case. In this case however it also added for a combination of colours to be registered they should be presented in a systematic arrangement showing the colours in a predetermined and uniform way.

United States of America

Before the passage of the 1946 Lanham Act, colour alone could not be registered as a trademark[5]. The theory of depletion of colours was the argument used to stop colours from being registered as trademarks .However after the entry of the Lanham Act the courts in the US were of differing opinion whether colour could be registered as a trade mark. In the case
Of Qualitex Co vs. Jacobson Products Co [6] the US Supreme Court stated that under the Lanham Act a colour would be registrable subject to the usual conditions.
“The Court went on to say that colour more than likely, would not be inherently distinctive or capable of signalling source to a customer. However upon achieving consumer recognition, also known as secondary meaning, similar to a colour, a word, should be able to serve as a mark”[7]. The court also dismissed the value of previous cases which did not allow single colours to be registered by stating that those cases where prior to the passage of the Lanham act and that the Lanham act had changed and liberalized the common law in the US. In Owens-Corning Fiberglas Corp, Re,[8] Owens-Corning was given a trade mark for the colour pink for its fibreglass batting insulation product. The colour was a non-functional aspect of the product as the fibreglass is usually yellow in colour. The company had been using the colour pink to emphasis the colour of their insulation for decades. They also licensed and used the Pink Panther cartoon in their ads and spent over 50 million US dollars on advertising for its product.

In the United States to register a trade mark consisting of colour the following requirements have to be met : (a) description of the mark with the name of the colour (b) drawing of the mark in the colour sought to be registered (c)a colour claim naming the colour which is a feature of the mark (d) a statement stating where and how the colour is used and appears on the mark (e)a drawing of the mark. In the US the Pantone Matching System has been accepted.


In India single colour trademarks have not been granted registration. The Indian system only allows for registration of a combination of colours. This is done because the Indian system tries to prevent the exhaustion of colours and they also feel that single colours lack distinctiveness which a combination of colours has. It is also done to prevent one trader from having a monopoly over a colour. The Indian view is that more buyers will readily identify 
with a combination of colours rather than a single colour.

To register a trademark in India the application should be able to be capable of graphical representation. Also the application should have with it a reproduction of the mark in black and white and four reproductions in colour. 

[1]BY, Pierre-André Dubois, Colour trademarks- the US and EUROPEAN approaches converge,,23/03/2011

[2] Libertel Groep BV v Benelux-Merkenbureau (C-104/01) 2004] Ch. 83; [2004] 2 W.L.R. 1081; [2003] E.C.R. I-3793
[3] UK Registry Work Manual. See also David Kitchin, Kerly's Law of Trade Marks and Trade Names, 1st South Asian edn (2007), pp.20-21
[4] Heidelberger Bauchemie GmbH's Trade Mark Application (C-49/02) [2004] E.C.R. I-6129; [2004] E.T.M.R. 99 ECJ.

[5] Leshen & Sons Rope Co v Broderick & Bascom Rope Co 201 U.S. 166 (1906).
[6] Qualitex Co v Jacobson Products Co 514 U.S. 159, 165, 115 S. Ct. 1300, 1304, 131 L.Ed. 2d 248 (1995).

[7] Robert C. Bird and Subhash C. Jain, The Global Challenge of Intellectual Property Rights,p179
[8] Owens-Corning Fiberglas Corp, Re 774 F.2d 1116 (Fed. Cir., 1985).

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