Can you monopolize a colour? On colours and their protection under trademark law.

The American retail chain 7-Eleven recently started legal proceedings against Nike over alleged trademark infringement. According to 7-Eleven, Nike is using the distinctive green-orange-red colour combination – which consumers have associated with its shops for many years – in a new sneaker. In doing so, Nike is alleged to be infringing the trademark rights of 7-Eleven, which holds trademark registrations for this colour combination in Europe and the United States. Whether there has actually been a trademark infringement remains to be assessed. In any case, the matter once again sheds light on an interesting topic in intellectual property law, namely the IP protection of colours. Colours and colour combinations can, in fact, be protected as trademarks under strict conditions.

In this blog, we outline a general overview of the trademark protection of colour.

A colour as a trademark

A colour trademark consists of a single colour or a combination of colours. Colour trademarks therefore restrict the options available to third parties to a greater extent than other types of trademarks, such as words and logos. Words and logos can be devised in virtually unlimited variations, meaning that, following the registration of a trademark, other parties are still free to use many other signs. The number of colours that can be perceived by the human eye, on the other hand, is limited. If a colour is monopolised by a trademark registration, there are therefore far fewer colours remaining that can still be used by third parties. For this reason, when granting and enforcing trademarks, a balance must always be struck between the interests of the trademark proprietor, who has invested in the recognisability of their trademark, and the public interest in colours remaining available. The latter certainly applies where the colours have certain psychological or aesthetic benefits.

Requirements for a colour trademark

The Court of Justice of the European Union has therefore sought to strike a balance between these interests and, in several landmark judgments, has set out strict conditions for colour trademarks. First and foremost, colours – just like any other trademark – must constitute a ‘graphic representation’. In the interests of legal certainty for third parties, it must be possible to determine clearly, precisely, completely, easily, comprehensibly, durably and objectively the subject matter for which protection is sought. A scent cannot therefore be registered as a trademark. For example, it is difficult to make it clear to third parties, on the basis of a trademark registration, what a protected scent actually smells like. This is generally easier with colours, as they can be easily reproduced digitally. However, a mere description of the colour or a colour sample is usually not sufficient for this purpose. An internationally recognised colour code will often suffice.

Distinctiveness of a colour trademark

Furthermore, the colour trademark must possess distinctiveness; the colour must be capable of fulfilling the so-called ‘indication of origin function’. People must be able to distinguish one product from another by means of the colour and associate it with the product’s origin. According to the Court, colours cannot often be assumed to indicate the origin of a product by virtue of the colour itself. Generally, the colour is merely regarded as a product characteristic. The Court considers that colours are more likely to be perceived as a trademark when used in a specific context.

Establishment of a colour trademark

This reasoning by the Court has meant that colours must generally be demonstrably ‘established’. Only then are they eligible for protection. This means that the trademark proprietor must have used the colour in such a way that it indicates the origin of their products. The public must actually recognise the origin of the products from the colour. Successful colour trademarks are therefore often the result of years of consistent use and substantial marketing investment by trademark holders. A well-known example is the distinctive yellow colour of Chocomel.

The same requirements apply to colour combinations as to individual colours. A colour combination must also be capable of forming a sign and possess distinctive character. Furthermore, it must be capable of being represented graphically. An additional condition applies to colour combinations. At the time of registration, it must be clear how the colours are arranged in relation to one another.

Need more information about protecting your company colour?

A recognisable colour can be an important part of your company’s identity. To protect a colour under trademark law, it is advisable to register the colour using its colour code and to gather evidence that consumers associate the colour with your company.

Would you like to protect your company colour under trademark law? Please feel free to contact our IP team.