Can colour be a trade mark?

27 June 2011

Maria Markiewicz, Piotr Dynowski

While a single colour can be a trade mark only if it acquires a secondary distinctive character, a composition of colours made in an appropriate way and with appropriate proportions of the colours used may be a trade mark which is inherently distinctive.

The possibility of registering trade marks which consist of colours has been controversial in Poland for a long time. So far, the Polish Patent Office has decided to accept and register just one colour trade mark, this being the famous Milka’s lilac colour mark.  The registration took place after several years of disputes between Kraft Jacobs Suchard, the manufacturer of Milka chocolate, and Stollwerck, the manufacturer of Alpen Gold chocolates.   In the Milka case the Board of Appeal of the Patent Office held that, due to the long standing and consistent use by Milka of its lilac colour, along with an intensive advertising campaign making use of this sign, Milka’s lilac colour had acquired a secondary distinctiveness and thus could serve as a designation of origin for Milka products.

In October 2010 the Polish Supreme Court ruled that a composition of colours made in an appropriate way and with appropriate proportions of the colours and shades used might be a trade mark which is inherently distinctive, and there is no need to demonstrate that this sign has acquired a secondary distinctiveness.  The case had been brought by British Petroleum P.L.C. (BP), an international energy company which has provided retail services and petrochemicals products in Poland since 1995. Its petrol stations are designed in characteristic green and yellow colours. BP owns numerous registrations for Polish, Community, and international trade marks, including colour trade marks. In Poland the discussed trade mark was registered under No. R-115856:

 Green

The trade mark consists of a combination of green and yellow colours and was registered, inter alia, for chemical preparations for industrial purposes, fuel for transportation, retail services such as petrol stations and car washes.  The judgment of the Supreme Court resulted from the lawsuit that BP had brought against a Polish entrepreneur, owner of several petrol stations in Poland, who used the same colours for his petrol stations.  The first instance court ruled in favour of BP and held the defendant liable for trade mark infringement and unfair competition.  The Court of Appeal went even further and ordered the defendant not to use the green colour in any kind of combination with other colours for inter alia some elements of the defendant’s petrol stations and for services provided in them. The Court of Appeal thus extended the scope of protection arising from BP’s trade mark No. R-115856.

The case was finally brought before the Supreme Court which held that the green colour was from the very beginning linked to the yellow colour.  There was therefore no reason why the defendant could not have used the green colour in combination with other colours.  The Supreme Court rejected BP’s claim that the green and yellow trade mark enjoyed a well-known reputation due to the attractiveness of the form of its graphic representation and its highly distinctive character. However, the Supreme Court held that the similarity between the appearance and colours of the defendant's petrol stations and the appearance and colours registered for BP and embodied in BP’s petrol stations caused a likelihood of confusion between those petrol stations.
 
The Supreme Court also stated that a single colour can be a trade mark only if it has acquired a distinctive character. There is a public interest in not restricting the availability of colours for other traders. In the case of businesses operating in a certain industry sector, such as petrol stations, there is only a small number of available colours which can be used to distinguish goods and services and also be considered aesthetic and useful in marketing. If only one undertaking has the exclusive right to use a specific colour by preventing the use of it by any other undertakings operating in the same business, this would in effect be a limitation on the freedom of others to pursue a business activity. It would also violate the principle of fair competition, especially in a situation where the market is interested in just a few colours which are particularly associated with that given industry sector.

The Supreme Court thus ruled that only a combination of colours made in an appropriate way and with colours and shades in appropriate proportions may constitute a trade mark. This would not prevent other entrepreneurs from using any of the individual colours used in the combination in question in combination with other colours.

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