15/04/2021
The UK-based chocolate company, Cadbury, applied for the trademark in October 2004, registering its right to use the colour purple (Pantone 2685c). But its rival Nestlé argued that colours could not be practically trademarked for commercial advantage. Although, after a lengthy battle with Nestle, Cadbury finally got the exclusive rights to use its own distinctive colour on its confectionary items in 2012.
Rejecting Nestle's appeal, Judge Colin Birss had said in the high court in London: "The evidence clearly supports a finding that purple is distinctive of Cadbury for milk chocolate."
Cadbury is not the first company to seek a trademark in a colour. Their court victory closely follows Heinz getting a trademark in the turquoise colour used on its baked bean tins, Christian Louboutin’s successful trademark of the distinctive red it uses on the soles of its shoes, and Orange acquiring a trademark in, you guessed it, orange.
One while looking to get a colour trademark should keep in mind two pointers:
1) Whether it serves a source identification function?
2) Making sure it does not serve a merely decorative or utilitarian purpose.
In addition to the above two criterias, one also needs to make sure they have proof of “secondary meaning.” Secondary meaning is when your mark has acquired distinctiveness in consumers’ minds to achieve the trademark status. Once you have this, it doesn’t matter if your mark is classified as not being inherently distinct. You can showcase secondary meaning by a high volume of advertising involving the colour mark, as well as consumer surveys reflecting that a high degree of relevant consumers associate that particular colour or combination with the applicant.
Although, if your colour mark performs a utilitarian function, getting a trademark becomes near to impossible. This was said by the Supreme Court that ‘a mark is functional, and therefore unprotectable, if it is either essential to the good or service, or affects its cost or quality. For colour marks, in particular, trademark protection may be denied if the colour indicates a characteristic of the good or service, such as its size, strength, or capacity. For example, Amber-coloured mouth wash was denied the colour trademark because the colour indicated the flavour.
It is advised not to trademark a colour since it limits the owner’s right to use the mark to that specific colour, making it difficult to prevent competitors to use the same mark in other colours. Although, for some products such as women’s high-heel dress shoe soles, using a colour trademark may make the product more distinctive and increase brand awareness.
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