The forefront of colour trade marks

Research has shown purchasing is heavily influenced by colours resulting from the consumer’s perceived identity of the brand or product, sometimes to the degree of being close to the only factor in a consumer’s choice to buy a product. A 2006 study published in the journal Management Decision claimed that people make decisions within 90 seconds of their first impression of a product, and colour alone contributes up to 90 per cent of the information that forms the decision. The fashion and jewellery industries have been at the forefront of colour trade mark.

Mattel owns the trademark for Pantone 219C, or “Barbie pink”. Tiffany Blue (officially “1837 Blue” in the Pantone chart in honour of the company’s founding year), which has been a registered trademark since 1998, is also called Robin’s Egg Blue, while Louboutin’s red-soled shoes (trade marked in 2008 in the US) are immediately identifiable to those in the fashion know. In 2018, the Court of Justice of the European Union also recognised Louboutin’s trade mark, which had become a point of contention with French brand Yves Saint Laurent when that brand used red-soled shoes in a collection, claiming to “evoke Chinese design elements”.

Louboutin has its work cut out in battling for its trade marks on red in a number of countries, since there is no consensus on single-shade trademarks internationally. There are other challenges to colour trademarks, including shade confusion doctrine and limitations on when it meets the definition of a trade mark, provable through history of use and distinguishability.

Australian Trade Marks Act

Per Section 6, Australian Trade Marks Act 1995 (Cth), the definition of a ‘sign’ includes any letter, word, name, heading, label, ticket, aspect of packaging, signature, numeral, device, brand, shape, colour, sound, or scent. A trade mark includes the combination of the above list or any item in the above list. For a colour to be registered as a trade mark, it must be inherently adapted to distinguish the goods or services of the owner. Single colours are considered less distinguishable. Australian brands seeking to use specific colours in their packaging or advertising can avoid infringements by doing a search for trade marked colours IP Australia’s Trade Mark Register.

Chloe Cort is an Australian and New Zealand trade mark attorney and a UK lawyer. She founded an intellectual property firm in London before relocating to Sydney and now specialises in international brand strategy and trade mark protection at Baxter IP.

“In theory, the rule across the board from a legislative standpoint is that colours meet the standards of what a trade mark requires, because there’s no definitive list. Sounds, jingles, a picture, and words can be a trade mark. Colours can be distinctive, clear, precise, accessible, objective, and for all of those reasons, a colour can be a trade mark and section 6 of the Trade Mark Act refers to this. In theory, yes, colour can be a trade mark but in practice, it’s not so much the legislation that is limiting, but the case law and other areas around ‘when is a trade mark valid?’”

Cort says in practice, there are other boxes to tick.

“In each individual situation, it needs to tick other boxes, and particularly the matter of being “inherently adapted to distinguish,” she says.

“That’s the key phrase people come up against in trying to register the trade mark for a colour. So, can you argue that this particular colour that you use for your goods or services is sufficiently distinctive?”

Cort is referring to the case of BP, in which they tried to trade mark a particular Pantone green shade, Pantone 348C, in 1991, but they were refused by the trade mark office and the Federal Court. In October 2013, IP Australia again rejected the company’s application for the sole use of green for the strip lights on its petrol stations, car service stations and takeaway food services.

IP Australia found BP was unable to show convincing evidence that the average petrol consumer inherently associated BP petrol stations to the dark green Pantone 348C shade.

“You have to consider, what is protected as part of a trade mark? It’s the parts of your trade mark that are distinctive that you own. So, BP owns a combination of colours – a scheme – rather than a single colour. BP filed a trade mark for their combination of distinctive yellow and green in their logo, and the more colours you uses in your logo – such as the unique 7/11 colour scheme of three colours – makes the trade mark process much smoother because you’re not trying to claim ownership over a single colour.”

Cort explains courts are more inclined to grant a colour trade mark where it prevents confusion in consumers and where the colour is not generic within the industry in question.

In Cort’s homeland of the UK, Cadbury’s won a trade mark battle in 2022 for the use of its distinctive colour purple (Pantone 2685C) on chocolate bar packaging in the UK.

She explains, “In case law, part of Cadbury’s argument in the UK was that they had established a reputation and an extensive association in the public mind for their use of that unique colour. Therefore, for another brand to package inferior chocolate in that colour would potentially damage the Cadbury’s brand.”

A tiff over Tiffany blue

An Australian business owner was issued a trade mark infringement warning by Tiffany & Co in May 2019 when she used the description “Tiffany blue” for several of her products online. Owner of Miss Poppins & Me, Hannah Poppins, told media she had not researched the trade mark prior to using the label “Tiffany blue”, but renamed her products “blue turquoise” instead. Importantly, Tiffany & Co did not object to Poppins’ use of the particular shade, only her reference to the brand in association with it.

Companies are not trade marking a colour to the full extent that it cannot be used by other companies. Typically, a colour is trade marked for a particular usage. For example, Christian Louboutin red is only for the sole of shoes, and Cadbury’s purple is used only for packaging.

Cort says, “Because the products are different, the brand was objecting to the affiliation with Tiffany & Co, or ‘parsing off’ in case law. It would have been interesting if [Poppins] had worked in jewellery, because the Tiffany & Co colour trade mark is for that shade of blue for use in jewellery boxes.”

“The process for all trade marks is the same, beginning with filing a trade mark application. For a colour, the legislation doesn’t specify that you need to define a Pantone shade, but it does say that it has to be accessible, or able to be referenced, and since Pantone shades are the most obvious system of defining colours by a unique number, that has become a default. Most colour trade marks have a swatch of the colour, plus a statement of the Pantone shade.

“In Australia, they will force you to give an endorsement to say, ‘this colour is for this specific use, such as this is for signage on petrol pumps within a petrol station’. The more narrowly you define the limited circumstances you want that trade mark for, the more likely you are to get it through.

“There is an additional expense for brands in having to reapply with an endorsement of limited use, or to prove the extensive use of that colour or their reputation for its uses, including providing a statutory declaration of all the ways you’ve used that trade mark. Usually, larger brands such as Cadbury’s, BP and Tiffany & Co have deeper pockets, so they’d be more likely to claim ownership over a single colour. The costs would be off-putting for a smaller business or startup.”

In case of infringement

Where brands believe that their trade mark has been infringed upon, there are “plenty of stages” says Cort.

“On the assumption that it is proved to be an infringement, most brands would hope for a settlement away from full conclusion of proceedings. Typically, an infringement notice is issued, and in most cases, that’s where it ends. The costs of bringing an infringement action begin at around $50,000 in Australia, and those actions that drag on go into the hundreds of thousands of dollars. If someone doesn’t respond to the cease-and-desist letter, or settle amicably, the damages and costs if you’re found liable are significant, including the costs of the legal case, and damages from whatever profits are made by the infringing party on the basis of using that trade mark.

“An Australian trade mark registration is for the jurisdiction of Australia and it includes any form of trade under that brand or similar brand that infringes on you within the boundaries of Australia, including imports. If you’re selling on Amazon in the US, or opening a shop in China, you’ll only be covered if you have a trade mark registered separately in those jurisdictions. You can file direct trade marks in the UK, China or the US, for example, but you can also make a Madrid Agreement or Madrid Protocol application where you take your Australian trade mark and extend it to any member of the Madrid Protocol which extends to most countries.”

Only a few countries, including Argentina, Saudi Arabia and Bangladesh are not parties to that treaty.

Do colour trade marks have a life span?

Cort tells LSJ, “Just like other trade marks, they have an expiry date of 10 years and can be registered in perpetuity as long as you continue to use the trade mark, and it doesn’t become generic – such as Hoover vacuum cleaners that ended up becoming a verb, as in ‘to hoover’.”

Cort says the costs of applying for a trade mark varies greatly from one jurisdiction to another.

“It’s very difficult to give a ballpark figure for the cost of filing for a trade mark under the Madrid Protocol. You can apply to many countries at once, but you still have to list specific countries and each of those countries have a fee. For example, the UAE government fee is between $3000 and $4000 for one single class of trade mark, whereas in Australia it’s approximately $250 and France around 100 Euros. Where you have more classes, such as registering trade marks for different product types – like bags and shoes – those costs can really add up.”

Cort says that because single colour trade mark applications are “almost certainly going to be refused off the bat”, it is worthwhile for brands to invest in a lawyer with IP experience to assist with the complex points of filing, and provision of evidence to prove that the colour distinguishes the applicant’s goods and services from competitors.