Fifty shades of purple? The Scope of Protection of a colour trademark

In an increasingly commercialized world, it is important for companies to find their own ways to attract the attention of consumers. In order to protect its trademarks, and to avoid infringements, companies registers its distinctive signs such as words, shapes, figures and even colour. For many companies, the colour is a vital part of communicating and clarifying their trademarks to the market. For example, who wouldn’t associate a purple coffee package with a certain Swedish coffee producer?

Registration of a colour, as a trademark, requires that it can be distinguished and represented graphically. Relatively few colours have been approved for registration. This may partly be due to the fact that the possibility of registering colours is relatively new, but also to the fact that there are only a number of colours that are actually available for trademark registration. Only colours that stand out in such a way that they can only be associated with one company can be registered. This means that colour registration is possible only in exceptional cases before the trademark is put on the market because the distinctive character in most cases is generated through establishment.

The legal situation, and perhaps above all the scope of protection, of colour registrations is still unclear. Last fall, however, the Court of Appeal in England ruled on a colour registration matter that could have consequences for colour registration in the future.

The case concerned the chocolate manufacturer Cadbury’s purple colour as used for some of its chocolate products. The colour was represented as follows:
“The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”

It was the competitor Nestlé that struggled for five years to have Cadbury’s application for trademark registration of this colour rejected. 

For a registration of a colour trademark to be distinguishable, the colour must, according to case law, be “clear, precise, self-contained, easily accessible, intelligible, durable and objective.”

Not the simplest of descriptions. And of course, one can discuss what a colour that is “self-contained” looks like. Either way, the Court of Appeal found, as opposed to the first instance, the High Court and the British Trademark Office, that the registration would not be approved since the use of the word “predominant” meant that the description was too subjective and not sufficiently precise, clear or intelligible.

For a colour to be registered, the Court held that it must be clear how the scope of protection is to be determined. If Cadbury had clarified what is meant by predominant in its application, for example that the colour must be on at least 50 percent of the surface, the outcome could have been different.

Since it is not a Swedish court or the European Court of Justice that ruled on this case, it is not directly binding on a Swedish court. However, the ruling may serve as guidance for the examination of colour registrations and it may be well worth a Swedish company taking it into consideration when attempting to register a colour.

What the ruling makes clear is that it is not enough for the graphical representation to produce a colour sample and a colour code, but the colour must also be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. This means that the application must clearly show how the reproduced colour should be used. Trademark proprietors must, therefore, be consistent in their use of the colour in order to register it. It also means that it takes more than what Cadbury has presented to get a colour trademark registered and that the scope of protection is kept narrower. A narrower scope of protection can, legally speaking, be preferable, simply in order to not make exclusivity unjustifiably strong. On the other hand, the consumers’ limited ability to perceive nuances entails that a broader scope of protection would risk becoming ineffective.

Swedish doctrine tends to advocate a broader scope of protection. This opinion is based precisely on the average consumer’s limited ability to perceive nuances. The fading memory image, which of course is the benchmark in assessing the likelihood of confusion, tends to be difficult to apply in terms of shades of colour as opposed to colours as such, or even traditional trademarks. There are simply an infinite number of shades of colour, but the consumer’s ability to distinguish and remember shades is limited. Gradually, as more questions are answered, the scope of protection of the colour trademark will be clarified and then more people will be able to evaluate the benefits that a colour registration can actually mean.