Many traders use colour to distinguish their goods and services from other traders. For example, you might use a particular coloured wrapper or box for packaging your products. However, registering a trade mark for a single colour can take time and effort. This is because a single colour is unlikely to distinguish your products and services from others. Therefore, you may have greater luck registering a trade mark for a combination of colours that can have some degree of inherent adaptation. This article explains five steps you might take to register a colour trade mark.
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1. Identify Your Trade Mark
A registered trade mark gives you the exclusive rights to use, license and sell your trade mark. This means that you can take legal action if someone uses a similar or identical colour to your trade mark concerning similar goods and services that your business provides. However, trade mark registration is not guaranteed. Instead, your trade mark must meet the following requirements to distinguish your business’ goods and services from others.
Is Your Colour Merely Functional?
Where a colour or colour combination is merely functional, IP Australia will not consider it inherently adapted to distinguish your goods or services. For example, a colour trade mark can be merely functional if it:
- provides a technical result, such as using the colour silver on building materials for insulation; and
- develops a generally accepted meaning in the trade or the wider community (such as using orange for high-visibility gear).
Is Your Colour Common to Your Trade?
If other traders in the industry commonly use your colour, it is unlikely that the colour can distinguish your goods and services from those of another. A colour can be common to your trade if:
- it is the natural colour of the product itself, such as the earthy hues of seagrass matting; and
- if there is a proven competitive need to use colour in a particular market, such as using colours as a form of coding to differentiate between metric fittings.
2. Represent Your Colour Graphically
In your application, you must include a representation of your trade mark as an endorsement of the application. This can come in the form of a:
- pictorial representation showing the mark you are applying to register; and
- a clear and concise written description of the trade mark.
If you choose to define your trade mark further using a written description, you can do so regarding a recognised colour-matching system.
To ensure your trade mark description is clear, you can also indicate a restriction or limitation to a colour. For example, you can express that your trade mark is ‘restricted’ to the colour green as shown in the representation you attached to your application. Suppose you express instead that your trade mark is ‘depicted’ in the colour green shown in the representation. In that case, IP Australia will not consider this to be indicative of a restriction to colour.
Continue reading this article below the form3. Classify Your Trade Mark
When you register a trade mark with IP Australia, you must select the goods and services you wish your trade mark to protect. To ensure that your trade mark adequately protects your business’ goods and services, you should conduct a comprehensive search of the Trade Mark Classification Search (TMCS).
To use the TMCS, you should enter keywords that describe the nature of your business’ goods and services and how your customers recognise your business. Furthermore, you should note that goods and services often fall into more than one category. While it may be tempting to include each applicable class in your application, this will be costly and potentially diminish your chances of obtaining registration. Ultimately, you want to select the most relevant classes.
4. Conduct a Trade Mark Search
IP Australia is unlikely to register a trade mark that is similar or identical to an existing mark. For this reason, you should search the Australian Trade Marks Online Search System to see if a similar or identical trade mark exists.
If you find an existing mark similar to yours, it may be possible for both trade marks to coexist if the goods and services they relate to are different. For example, you might have one colour trade mark that protects soap in class 3 and a similar colour trade mark that protects chocolate in class 30. Although both trade marks are for the same colour, the products it protects are different goods with different purposes that traders sell through different trade channels.
5. Register Your Trade Mark With IP Australia
Once you complete the steps above, consider lodging a trade mark application with IP Australia via its online services platform. In your application, you must provide:
- your details, including contact address;
- the graphical representation of your trade mark;
- the classes of goods and services you intend to apply for; and
- the filing fee.
Key Takeaways
You can only register a colour trade mark if it can distinguish your business’ goods and services from others in the market. To register a colour trade mark, you should:
- identify whether the mark is registrable;
- provide a graphic and written description of your colour trade mark;
- classify your trade mark in the appropriate class or classes;
- conduct a trade mark search to ensure someone has not already registered a similar mark; and
- file your application with IP Australia.
If you have further questions about registering a colour trade mark or need assistance with the application process, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
A colour trade mark is a single colour or a combination of colours that you use to distinguish your business’ goods or services from others.
To gain trade mark protection in Australia, you must apply to register your trade mark with IP Australia.
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