It is undoubtable that a product’s get-up influences consumers. Sometimes so much so that they will forgo purchasing a particular item because the product’s packaging doesn’t appeal to their sense of self. While get-ups come in all shapes and sizes, they have one thing in common – a colour concept. Colour concepts are the cornerstone of marketing, as they convey the ‘personality’ of the goods in question. Colours and colour combinations are capable of giving a business a distinct edge over that of the competition. One only needs to think of brands such as Coca-Cola, Fanta, Cadbury and the like to understand the influence that colour has on a consumer’s perception and recollection of a product. Unsurprisingly, many traders wish to trade mark particular colours and/or colour combinations. Thus the question arises, is it possible to regsiter a colour trade mark and, if so, what are the relevant considerations?

Rest assured, it is most certainly possible to register a colour as a trade mark. The colour may be applied to the goods themselves or the packaging of the goods. However, unlike with traditional marks, certain additional requirements must be met.

Representing and describing the colour

When submitting an application for a colour trade mark, the applicant must submit:

  • a clear and concise description of the mark they are applying for; and
  • an example of the actual colour or colour combination.

It is not an essential requirement that the applicant submit a pictorial representation that demonstrates how the colour is to be applied to the product. Nevertheless, it may be beneficial to do so for the purpose of clearly defining all the elements that make up the trade mark.

Single colours and combinations of colours

The registrability of colour trade marks will, as with all trade marks, depend on the mark’s ability to distinguish the applicant trader’s goods from those of others.

The application of a single colour to goods and/or packaging is generally unlikely to amount to a registrable trade mark. Generally, colour combinations have a higher probability of meeting the threshold requirements for registration.

Colours common to the industry

An assessment of a colour mark will, amongst other things, depend on:

  • what colours/ colour combinations are common to the industry; and
  • whether other traders are likely to want to use the colour/colour combination in the ordinary course of trade?

If the colour is common or likely to be needed by other traders, the trade mark is unlikely to be accepted for registration.

Functional colours

Similarly, if the colour or colour combination serves a:

  • technical function: provides a particular technical result, utility or outcome;
  • economic function: is the natural colour of the item or arises as a result of the main method of manufacture;
  • ornamental function: conveys an accepted meaning within the trade e.g. depicts the items quality, grade or purpose, it will not be registrable.

Overcoming an objection to a colour trade mark

In circumstances where a colour trade mark has been rejected on the basis that it does not adequately distinguish the trader’s product from those of others, it may be possible to overcome the objection by tendering evidence showing where and how the colour has been previously used as a trade mark. It must be shown that the use of the particular colour is something quite apart from the goods themselves. The onus falls on the applicant to demonstrate this, and it may be a difficult burden to discharge.

Conclusion

If you would like to know more about colour or colour combination trade marks, the likelihood of your mark proceeding to registration or simply want more information regarding colour trade marks. Why not contact our friendly team of LegalVision lawyers to see how we can help. We would be happy to assist and answer any queries that you may have.

Vanja Simic

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