Two recent developments in Australia highlight the difficulties that are involved in protecting and enforcing colour. The first is the news that BP’s Australian trade mark application for the colour green (Pantone 348C) for both petroleum products and service stations was rejected by the trade mark authorities, on the basis that BP failed to prove that the colour had become distinctive of the company’s goods and services - in other words, BP failed to establish the acquired distinctiveness that you need to establish when you try to monopolise something as ordinary as a single colour.

The second is the news that Telstra, the producer of the Yellow Pages directory in Australia, failed in its passing off case against another company that uses the colour yellow in relation to print directories, as well as on its website and app. The court made a number of findings. It found that the colour yellow is generic in the context of directories, and that it simply signifies a directory rather than the directory of any one company. It found that the fact that Telstra always uses the colour yellow in conjunction with other trade marks, such as Yellow Pages and Talking Fingers, was relevant. It found that the second company’s use of the colour yellow was unlikely to cause confusion amongst consumers, and certainly wouldn’t confuse advertisers who would be very careful before parting with their money. And it made the point that any company that uses a single colour as a trade mark must accept that a competitor will probably be able to use the same colour with minor differences in get-up.

These decisions add to what is a pretty confused picture. In the EU trade mark system a colour can theoretically be registered, but in practice it’s very difficult. One obstacle is that - as with any other unconventional trade mark such as a product shape or a sound – you need to persuade the authorities that consumers regard the colour as a trade mark, in other words an indicator of origin. Another is that you need to comply with the test that’s been laid down, which is that a registered trade mark must be ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective’. When it comes to colours, is seems that possible ways of achieving this may be to specify the Pantone number in the case of a single colour, and to spatially limit and systematically arrange the colours in the case of a colour combination. Colour registrations have been allowed in the EU, such as the colour orange in the name of champagne maker, Veuve Clicquot, and the colour orange in another product area in the name of a company called Libertel.

But simply specifying a Pantone number isn’t always enough. In the UK, Cadbury - a company that’s strongly associated with the colour purple - failed in its attempt to register the colour in an application that was described as comprising the colour Pantone 2685C ‘applied to the whole visible surface, or being the predominant colour applied to the whole of the visible surface of the packaging.’ The UK Court of Appeal refused this application, saying that it wasn’t sufficiently clear or precise, adding that registration of such a loosely-worded trade mark would give Cadbury an unfair advantage over its fierce rival, Nestle, a company that had opposed the application. As the use of the word ‘predominant’ seems to have been the major problem, this can probably be seen as a decision based on a technicality rather than one of substance.

When Christian Louboutin sued the company Zara for trade mark infringement in a French court he relied on a French trade mark registration for red-soled shoes. But he lost, because the court felt that his registration was too vague as it didn’t specify a Pantone number. Louboutin did slightly better in the USA when he sued YSL for infringement of a US trade mark registration for red-soled shoes – the court accepted that his registration was valid, but said that it was limited to situations where there’s a colour contrast between the sole and the rest of the shoe, which meant that YSL had not infringed the registration because it sold an all-red shoe. The court made the point that the US Supreme Court has in a case involving the colour pink for roof insulation (Owens-Corning) recognised that a single colour can be registered as a trade mark provided that it isn’t functional, and provided that it is in fact distinctive of a single company. It added that there’s no reason why this thinking can’t apply to the world of fashion, despite the significance of colour to that industry.

As far as I’m aware, South Africa still awaits its first High Court decision on colour trade marks. We did have a Trade Mark Registry decision a number of years back, where an application by Cadbury to register the colour purple for chocolate was refused on the basis that acquired distinctiveness had not been proved. Colour issues come up from time to time at the Advertising Standards Authority (ASA), but the authorities clearly aren’t keen – in one case the ASA rejected an attempt by the company IBurst to monopolise the colour orange in the telecoms space, and in another it rejected Canderel’s argument that it was entitled to exclusivity in the colour combination of red and yellow in the context of artificial sweeteners. In both cases the ASA made it clear that its Code seeks to protect original intellectual or creative thought rather than arbitrary things like colour.

Yet colour protection does remain an option in South Africa, especially in the light of the fact that the word ‘mark’ is defined in the Trade Marks Act to include colour. Certainly those companies that are clearly associated with a colour or colours – MTN would be an obvious example – should be able to get trade mark registrations provided that they can file credible evidence of acquired distinctiveness (as far as I’m aware MTN have filed applications for the registration of the colour yellow in a number of countries). And, as for enforcing colour against competitors, trade mark infringement is a possibility for those with trade mark registrations, and passing off for those that don’t. As passing off proceedings are difficult at the best of times, those companies that do feel that they have a genuine claim to colour exclusivity within their field should seriously consider trade mark registration.

ILSE DU PLESSIS: Director in ENSafrica’s IP Department ([email protected])