18 July 2016
The issue of colour and its place in trademarks
From time to time the issue of colour and its place in trademarks (whether UK or EUTM, as we must now call them, rather than ‘Community Trade Marks’) raises its head.
The reason is that colour plays an important part in human recognition of objects and, as any marketing department will tell you, if you can ‘own’ a colour, you can transcend all the language barriers that the world has to offer. Although diamonds may be a girl’s best friend, insofar as Tiffany’s is concerned, it is a particular shade of light blue that is its best friend. The instant recognition among a wide variety of consumers tells its own tale as to why colours are so important.
However, insofar as the law makers and enforcers are concerned, there is only a limited range of colours, or combinations of colours. The primary task is to ensure there is a sufficient stock of colours available to all business in whatever field of goods or services they operate in.
Most trademark registries consider that unless there has been substantive use of colour, or colour combination, over a period of time, coupled with consumer recognition, then a colour is simply functioning as decoration and not an indicator of source or origin of the goods. It is why so much effort is put into finding evidence of distinctiveness of colour marks through use (as colour marks rarely are inherently distinctive).
Like many others in many different fields, Glaxo became attracted to the colour purple, which it sought to register on 15 June 2004. The mark was registered simply for inhalers in Class 10 (using the International Classification system) and beneath the image, which looked like a CAD drawing of one side of the inhaler itself, it had the description: ‘The trademark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler’.
Those of you who are asthmatics or suffer respiratory problems, or who have a family member who does so, will almost certainly be familiar with Glaxo’s Ventolin product, but perhaps less familiar with the Accuhaler, which is what the drawing depicted.
However, it was necessary to use a code, developed by the World Intellectual Property Office, which provides a description of the elements of the mark. The code used – 558 − means: ‘Mark consisting exclusively of one or several colors.’
Accordingly, taking the depiction, the reference to the colours and the code, those clearly indicate this was a colour mark only. It was not, therefore, a shape and colour mark. Even if it had been so described, for reasons which will become apparent, it is highly unlikely the mark would have survived, because of the wording in the description.
The actual case concerned Glaxo’s claim for trademark infringement (among other things) by Sandoz Limited, which is the generic arm of Novartis. Sandoz sought to short-circuit the usual legal procedure by bringing an application for summary judgment on its counterclaim which sought to invalidate Glaxo’s trademark.
The key issues raised in the proceedings were identical, for all intents and purposes, to those previously raised in the Cadbury v Nestlé trademark wars, and Cadbury’s colour purple. Given that is the case, it is perhaps slightly surprising that Glaxo put up a fight.
By way of reminder, there is a series of cases emanating from the Court of Justice of the European Union, which looked carefully at how colour marks were being applied for and what those colour marks needed to show. Although the principle that a single colour, or combination of colours, could function as an indicator of source or origin of the goods was accepted, the Court’s view was that on the whole that is not how consumers view such colour or colours.
Moreover, the original application form contained a small square in which the mark applied for was to be displayed. Where the mark consisted of two colours, the general approach by trademark practitioners was to divide the square window into two and provide a depiction of the relevant colour to be claimed.
There was also a description, but in the early days, it was simply stated as ‘yellow’ or ‘blue’. The practice that has now grown up, following the Sieckmann case which, while not dealing with colour marks, nevertheless makes it clear that marks must be unambiguous and readily searchable by interested third parties. The practice then grew to using an internationally recognisable colour scheme, and most trademark practitioners latched onto the Pantone scheme.
The issue at the heart of the Cadbury purple case was that, although it was recognised that consumers did recognise the colour purple for the relevant goods (i.e. chocolate), it was the way that Cadbury had sought to register its mark that was problematic. The description used the words (after referring to the colour): ‘applied to the whole visible surface, or being the predominant colour applied to the whole visible surface…’
The Court had no issue with ‘whole visible surface’, but the use of the word ‘predominant’, in the Court’s eyes meant that there was uncertainty as to what the actual trademark was. In other words, there could be any number of combinations which meant that the mark was not ‘clear, precise’ etc, as required following the Sieckmann case. Cadbury therefore lost its trademark registration.
In the Glaxo case, its leading counsel argued that what was depicted was an abstract and that an abstract could encompass variations. Accordingly, the mark was therefore validly registered. This argument was put forward on the basis of a decision in the CJEU involving Apple, and its successful registration of a depiction of an interior of its stores.
In that case, the Court considered that it was unnecessary for Apple to provide specific dimensions of, for example, the desks upon which the computers would rest. This was because it was the representation as depicted which had to be capable of indicating one undertaking’s goods or services from those of another (a fundamental of any trademark). In this respect, the Court considered it was to be treated like packaging and thus specific measurements were unnecessary. Hence why Glaxo considered that ‘variations’ within a trademark registration were allowed.
Clever though this argument was, this was not looking at like for like, since the Apple registration was a three-dimensional representation, whereas Glaxo’s mark was accepted as being a purely colour mark. The Judge therefore considered that there was no support for Glaxo’s ‘abstract variations’ argument.
Moreover, the Judge considered that where issues of infringement are concerned, a third party is entitled to know precisely what it is alleged to have infringed and not be left guessing what each variant may or may not cover. Accordingly, the reader was set a puzzle as to what the respective proportion and arrangement of dark and light purple would be.
The key problem there was that because this was simply a colour mark, and not a shape and colour mark, there was no contour (in other words, context) as to how the colour was applied to the mark when the ‘variant’ argument was considered. That being the case, the Judge concluded that the mark was invalidly registered.
The fatal wounds inflicted were Glaxo’s own in the use of the description − which introduced the ‘variant’ concept − and accepting the international code, which clearly indicated that the mark was a colour mark only and not a shape and colour mark. There are plenty of examples of marks that have got onto the register which combine shape and colour (John Deere’s tractor springs to mind) but not colours on their own, without shape or contour.
There is no doubt that colour will continue to be a battlefield between competitors − the chocolate wars between Cadbury and Nestlé continue and are now spilling over into three-dimensional marks, with Cadbury taking revenge on Nestlé by invalidating its 3-D representation of the Kit-Kat bar.
However, the parameters are now clear as to what will or will not work and it is certainly possible to achieve a successful registration. How useful that registration is in keeping others off the grass remains to be seen. But, at least getting it on the register, and validly registered, would be a good start.