Colours and trade marks

Can Colours Be Registered As Trade Marks?

Libertel Groep BV v Benelux-Merkenbureau (Unreported, 6 May 2003, ECJ case no c-104/01)

The European Court of Justice (‘ECJ’) way back in 2003 confirmed that a colour can function as an indicator of origin and therefore seek protection as a registered trade mark.

The case Libertel Groep BV v Benelux-Merkenbureau, concerned the representation of a colour as a trade mark. To successfully register a trade mark, the mark must be capable of being represented graphically. In this case the European Court of Justice held that the use of a sample of a colour in question is causes complications as the mark may deteriorate with time.

The ECJ set a precedent in that only a verbal description of a colour will suffice for registration purposes for the filing of both a Community trade mark and a national trade mark. Furthermore, the ECJ went on to say that the description of the mark must be ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective’.

The essential question before the Court was whether a colour in its own right has sufficient distinctive qualities to function as a trade mark. The Court identified the problem that consumers do not commonly assume or rely on a colour as an indicator of the goods to which the colour is affixed. In fact the Court went on to say that colour is not ‘in current commercial practice, used as a means of identification’.

It would therefore seem that the starting point for a colour mark is that it is devoid of distinctive character and then it would be for the applicant to provide evidence to the Trade Marks Registry that the mark has acquired a distinctive character through use in the market.

The ECJ went on to say that:

‘… regard must be had to the general interest in not unduly restricting the availability of colours for other traders who offer for sale goods or services of the same type as those in respect of which registration is sought.’

Finally, the ECJ made it clear that the wider classifications covered under the ambit of the trade mark application and the more likely that the applicant will unfairly restrict consumers in using particular colours to their packaging/goods. This is a factor that the applicants, Trade Mark Examiners and the Courts should take into consideration before awarding the applicant a monopoly in a particular colour.

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