What a trademark is like everyone can see… but, is it so obvious indeed? Part 4 – a color

The issue of what a trademark is and what is its legal definition was discussed in the previous parts of this series (You can read it here).

One more kind of unconventional trademarks (those apart from the most popular ones, such as word, word-figurative or figurative marks) is a trademark being a color.

A trademark  which constitutes a color is a mark composed of only one color (per se) or a combination of colors without the outlines.

This kind of trademarks shall be represented by a reproduction of color or a combination of colors without marking the outlines, which reproduction shall demonstrate in a uniform and predetermined way  their regular arrangement, along with the indication of colors by referring to the generally accepted code of colors – for example the PANTONE color identification system.

It is also important that an application for registration of a color or a set of colors as a trademark includes a description of the mark indicating the position of colors and their proportions.

If the representation of the mark incorporates other elements apart from a color or a combination of colors – for example, words – such mark will not be regarded as a color trademark (or a trademark being a combination of colors), but as a word-figurative mark.

Below there are examples of trademarks which were granted protection rights – and which had been applied as a color per se.

R.271601 – Right Holder: Orange Brand Services Limited (one of the most popular operators of mobile phone communications), the trademark was intended for designating services in class 38: “mobile phone communications”;

IR.644464 and EUTM 000031336 – Right Holder: Kraft Foods Schweiz Holding GmbH (a famous manufacturer of sweets), the mark was destined for designating „chocolate and chocolate products” in class 30.

EUTM 000962076 – Right Holder: United Parcel Service of America, Inc.(a famous courier company), the mark was destined for designating services in class 39: “Transport; packing and storing of goods; services with relation to transportation and delivery of letters, documents, messages, printed matter, and other goods and properties by various means of transportation”;

EUTM 000212787 – Right Holder: Deutsche Telekom AG (a popular operator of mobile phone communications), the mark was intended for designating services in classes 38 and 42: „Telecommunications; rental of telecommunication equipment; information about telecommunication; rental of message sending apparatus; telecommunications value-added services included in class 38, namely telecommunications services with above-average utility providers; telecommunication services for others; all the aforesaid services including related information and consultancy services; none of the aforementioned services including news agencies; designing installations and equipment for telecommunications”;  

EUTM 002087005 – Right Holder: Victorinox AG (a famous producer of high quality penknives), the mark was destined for goods in class 08, namely „penknives”;

EUTM 012886677 – Right Holder: Bornack GmbH & Co. KG (a famous producer of safety equipment), the mark was intended for designating goods in class 09, namely: „Securing and rescue apparatus for rappelling up or down shafts, silos, tanks, cisterns (in particular rescue devices, in particular fall protection), in particular by means of a supervisor, in particular tripods, winch arms with support tube, rescue winches, rescue slides, support tubes being attachment points for safety ropes”;

What is more, both in Poland and in the territory of the European Union, a number of trademarks have been registered as a combination of colors:

EUTM 018118483 – Right Holder: Red Bull GmbH  (one of the biggest manufacturers of energy drinks), the mark was destined for goods in class 32, namely: „non-alcoholic beverages”;

EUTM 013824487 – Right Holder: SAFILO S.p.A. (a renowned manufacturer of sunglasses), the trademark destined among others for: „sunglasses; spectacles; spectacle cases”;

EUTM 009388877 – Right Holder: Andreas Stihl AG&Co. KG (one of the biggest manufacturers of cutting machines), the mark destined among others for „chainsaws”;

EUTM 006967475 – Right Holder: Wirtualna Polska Media Spółka Akcyjna (the owner of the first Polish internet web portal published in the Polish language), the trademark covers among others the following goods and services in classes 09, 16, 35, 36, 37, 38, 39, 41, 42 and 45: ”computer equipment and software; printed publications; advertising services; promotion and marketing services; financial affairs; installation of computer and telecommunication equipment; telecommunication services in the scope of transmission of sound, images, documents and data, including via electronic, wired, wireless or satellite means; education services; social networking services”;

EUTM 005853742 – Right Holder: Lidl Stiftung & Co. KG (a popular network of supermarkets), the mark was destined for „retailing of foodstuffs and nutrients, sanitary articles, washing and cleaning preparations; cosmetics; medicines, household or kitchen articles and utensils, crockery and cutlery, office requisites, craft supplies, decorative articles, stationery requisites and school supplies, clothing, footwear, textile goods, in particular household textiles, haberdashery, leatherware, travel articles, electronic entertainment equipment and apparatus, computers, telecommunications apparatus, sporting articles and toys, construction articles, DIY and gardening requisites, machines, in particular household machines and devices, foodstuffs for animals and pet accessories”;

EUTM 003757473 – Right Holder: BP p.l.c. (a famous network of gasoline stations),  the mark was destined for goods and services in classes 04, 37, 39 and 43 such as: ”oils, greases, fuels, repair of vehicles, vehicle wash services, vehicle fueling services, rental of vehicles, snack-bar services”.

Upon making a decision on filing an application for registration of a single color or a combination of colors as a trademark, one should take into account that obtaining protection rights for this category of signs may not always be possible. Refusal of registration may be issued in the following cases:

• A trademark application includes too many colors, as a result of which an average consumer will not be able to remember them;
• The applied color is only a decorative element of goods, or appears upon consumer’s request – e.g. the colors of T-shirts or the colors of cars;

• The applied color constitutes an essential feature of goods, e.g. a coloring shampoo or dark chocolate;

• The applied color indicates a technical function of goods – e.g. the red color of fire extinguishers;

• The applied color has a customary or universal character, e.g. a blue color of medical gloves;

• The applied color indicates particular features of goods, such as taste: yellow – lemon taste, pink – strawberry taste;

However, if a company is using a color per se, or a combination of colors for distinguishing one’s products or services on the market for some time, and that color or combination of colors allows to identify the goods or services with a particular company, it is worth considering the filing of an application for its registration as a trademark.

Prior to filing an application, it is always advisable to consult a patent attorney in order to obtain a professional assessment of the potential chances of granting protection for a trademark being a color per se, or a combination of colors.

And if not register a color as a trademark, perhaps a sound? The discussion is to be continued in the next part of the series – this time focusing on sound trademarks.