Color Trademarks: US, Europe and China

All of you are aware of the Tiffany's blue or the Cadbury's purple. In cases like this, we can easily say that a colour is famous as much as the name of the brand and – consequently – very distinctive of the product.

From the legal perspective the matter of the registration of a colour as trademark is interestingly sophisticate and – of course – regulated in different ways in different countries. Indeed, we love to remember that laws are mostly nationals and therefore Countries can independently decide if and how to protect certain aspects …especially in these new and controversial areas where there are not mandatory international treaty to follow.

In other words, even if all of us automatically connect a determined colour with a certain brand, the registration of that same colour as a trademark is not so simple and plane.

In the United States, while colour combination had long been protectable, it was only in the ‘80s that a single colour was recognized protectable as trademark. This happened when Owens-Corning launched the "Think Pink" campaign for its fiberglass building insulation. In 1985, a U.S. Court of Appeals in Washington ruled that the company had the right to prevent others from using pink for insulation.

In 1995, the United States Supreme Court further acknowledged that a colour could be used as a trademark in the case of Qualitex Co.v. Jacobson Products Co., Inc.  The Court held that the greenish-gold colour of dry cleaning press pads was protectable as a trademark. This colour met the requirements of a trademark by acting as a symbol, operating as a source identifier and serving no other function aside from identifying the press pads’ source.

On the contrary not long time ago General Mills was denied trademark protection for the yellow colour of its Cheerios cereal boxes because already widely used with respect to a particular type of good or service. 

In the European Union formal trademark protection for color marks was introduced by the so called Trademarks Directive (First Council Directive of December 21, 1988). In Libertel Groep BV v Benelux Merkenbureau [2003] the Court of Justice clarified that, due to the particular features of colour trademarks, some conditions for registration have proven to be particularly difficult, namely the graphic representation of the mark and the requirement of distinctiveness.

Indeed, colour is typically not inherently capable of distinguishing the products of one party from those of another. Therefore, single colours are not inherently distinctive except under very special circumstances. If a colour mark is not inherently distinctive, acquired distinctiveness must be shown prior to the filing date of the application.

It is typically easier to demonstrate acquired distinctiveness for colour combination trademarks. Colour combination marks have been recognized in several General Court judgments, including BCS SpA v Office for Harmonisation in the Internal Market, [2009] and CNH Global NV v Office for Harmonisation in the Internal Market  [2010].

In China the reform of the Trademark Law in 2001 introduced protection for colours trademark. The recent reform of Trademark law in 2014 confirmed the previous rules. Reading art. 8 of the Chinese Trademark Law (2014) we find that the provision refers to “colour combination” rather than single “colour”: “any sign, capable of distinguishing the goods or services of one natural person [...] combination of colours, shall be eligible for application for registration as a trademark”.

Therefore the CTMO’s examiners are not allowed to register a colour per se, even though this colour is characteristic of the source. On the opposite, it is possible to register a combination of colours, i.e. the combination of two or more colours, which can easily distinguish the source of products.

This means that Tiffany blue is not protectable in China under Trademark Law but, on the other hand, John Deere’s green and yellow is allowed to protection.

The first application of such art.8 – within an infringement case - seems to beDeere & Company vs. Jiu Fang Tai He International Heavy Industries (Qingdao) Corporation & Jiu Fang Tai He International Heavy Industries (Beijing) Co., Ltd. (2014). In such case the Plaintiff was the right owner of the above mentionedgreen-and-yellow combination trademark. The designated goods included harvesters. The Defendants in this case used a similar combination of colours on their harvester in a similar way. The Court, accepting Deere’s claims, stated thatRelevant consumers always associate this method of use with Deere’s agricultural machinery […] thus Defendant’s use of an extremely similar colour combination by a same/similar method in the same/similar goods will cause confusion as to the goods’ origin among relevant consumers.”

John Deere harvester

Jotec Harvester (before the litigation) 

Despite the Chinese Trademark Law does not offer protection to single color trademarks, this does not mean that single color might not find protection in China. Indeed a few days ago – with great surprise - the Beijing High Court ruled in favor of the French Louboutin in the famous red sole shoes case. Years ago the fashion company had applied for protecting as trademark its shoes with a red sole and both Trademark office and TRAB had rejected the application. The case was mostly referred to as position trademark seeking for the protection of the color red applied to a shoe’s sole. As mentioned, in the beginning of January 2019, the Beijing High Court has accepted the appeal from Louboutin and remitted the case to TRAB requiring a new examination of the distinctiveness of such application. Despite the TRAB decision is not yet issued and therefore the Louboutin trademark is not yet approved or registered, it is very much likely that TRAB will grant the registration and therefore a single-color mark applied to a specific position on a product will be registered in China. And this is the famous Louboutin red sole.

In addition also under Anti-Unfair Competition Law it would be possible to obtain protection for the design of a product or its packaging and there is not any preclusion to single color protection. In 2015, Stihl, a manufacturer of power tools, was deemed to have trade dress protection for its distinctive orange-and-grey color scheme against a Hangzhou machinery company that had made exact copies of several Stihl chainsaws, including the color scheme but excluding the “Stihl” trademark.

In conclusion, a successful registration of a colours combination allows the rights holder to enjoy exclusive rights of use over the colour mark and prevent third parties from using it on same goods. 

Silvia Capraro & Fabio Giacopello

HFG Law&Intellectual Property