Trademarking the Rainbow

From Cadbury’s purple to Tiffany & Co’s robin egg blue, distinctive colours have become synonymous with the brands they represent. Branding – in particular colour – is a powerful form of consumer recognition and brand distinction.  Thus, the legal protection of colours has on a number of occasions become a hot-headed issue as companies aggressively try to protect their brand identity from competitors. The issue of whether you can trademark a colour arose again recently when British Petroleum (BP) tried to trademark a shade of green.

Image credit: www.visioncreation.co.uk

When can you trade mark a colour?

Trademarking of colours has traditionally been a shady area, with resistance from authorities to recognise them as the legal property of a brand. To use a colour as a trade mark, the colour must be specifically identifiable with a company’s goods or services and distinguishable from others.  Just as authorities won’t grant a monopoly on words or expressions which are likely to be needed to describe goods and services, they are unwilling to do the same for colours. IP Australia, the body who regulate trademarks, has stated that a single colour “will generally be regarded as being devoid of inherent adaption to distinguish.” Thus, it requires continual use (as a trademark), colour recognition by consumers, and distinct parameters of use for colour trademarks to be granted. We’ve outlined some examples of where the trademark of colours has been successful, and where it has failed.

 BP Green with Envy:

IP Australia rejected BP’s application in July this year to trademark a shade of green known as Pantone shade 348C. BP faced resistance from Woolworths who hold a trademark for a similar colour for their well-known apple-shaped logo.  IP Australia said that if the colour was used alone it would fail to be distinguishable and was not indelibly linked in the average petrol consumer’s mind to BP. Just think, would you recognise BP’s shade of green if it wasn’t accompanied by their brand name or logo? The finding concludes 12 years since BP original filed for the colour trademark in Australia. However, BP has successfully obtained colour trademarks for the same shade of green in the United Kingdom and Europe.

Other Trademarked colours:

In Australia and abroad, there have been companies which have successfully trademarked their colours. Here are a few examples:

Red:

Fada bananas, the supplier of ecologically-grown bananas, successfully trademarked their distinctive red wax tip. The ecologically grown bananas were held to be recognisable to consumers and easily distinguished from traditional bananas. Whilst this isn’t an example of colour per se, it reflects how the distinct use of colour can be trademarked.

Louboutin successfully trademarked their famous red soled high heels in the USA after a long uphill battle with reluctant courts. The exception to the trademark is for other shoes which are monochromatically red and wish to include a red sole.

Purple:

Cadbury successfully trademarked their distinct purple shade, Pantone 2685C, in the UK in 2012. The British colour trademark emerged as Cadbury were embroiled in an Australian litigation against competitor Darrell Lea. The five year litigation ended in 2008 when the Federal Court held that Darrell Lea had not breached the Trade Practices Act or engaged in misleading or deceptive conduct by using purple. The Court noted that a “cause to wonder” is not adequate to amount to misleading or deceptive conduct, and the name Darrell Lea on a purple chocolate wrapper could not confuse a consumer to thinking it was a Cadbury product. The colour purple was never used in isolation without some branding or script, allowing other competitors, such as Darrell Lea and Nestlé for Violet Crumble bars, to use other shades of purple.  In Australia, Cadbury was not able to trademark the colour purple in general, however it was able to protect the specific shade it has used on its packaging since 1914.

Yellow:

Telstra was unable to trademark the word “YELLOW” for their online telephone directories, as competitors or other traders would use the word honestly and commonly for similar phone directory products. The Federal Court of Australia emphasised that they would not grant monopolies lightly, and in the circumstances of Telstra it was not appropriate.

Caterpillar Inc, known for their tractors and other agricultural equipment, were able to trademark “Caterpillar yellow.” The difference here was the distinct colour not closely associated with the agricultural machine industry, and the bright yellow shade was accompanied with the brand name Caterpillar. Of course, the trademark only limits other machinery companies from using the same or a similar shade, not an overall ban on the use of yellow.

Other trademarked colours include Barbie pink, UPS brown and Tiffany blue. The trademarking of colours limits the protection to competitors in the same industry and therefore the companies discussed do not hold the boundless exclusive rights to the use of the colour. An application to legally trademark a colour will be an uphill battle for any brand with high evidentiary burdens and an overall reluctance to monopolise the use of colours. It’s important to remember that each case will turn on its own facts and factors such as the combination of distinct colours will more likely be successful. Therefore it is always favourable to take a vigilant approach when branding or rebranding as competitors will seek to protect their brand identity. Choose colours which are not closely associated with competitors or with the product itself, or use a distinct combination of colours. The failure to think about competitors and trademarks may result in expensive and time-consuming litigation, regardless of whom the Court holds as the winner.

For any questions you may have in relation to brands and trade marks, please feel free to give our team a call.