Registration for a single colour can be just as effective as a registration for a distinctive word mark, but choose carefully.
Trade mark case law is littered with the remains of attempts to register a single colour as a trade mark. From Woolworths and BP’s highly publicised fight over BP’s efforts to register the colour green for petrol and vehicle service stations to Nestle and Mars Australia’s fight over the colour purple for cat food. Some of the efforts to monopolise a single colour as a trade mark were eventually successful but only after significant effort and expense.
Telstra and Sensis are the latest additions to the heap following their unsuccessful attempt to register the word YELLOW for business directories. The Federal Court recently dismissed their appeal confirming that the colour Yellow is not capable of distinguishing one company’s services relating to business directories from those of another because the colour Yellow is commonly used in the marketplace in relation to those services. It follows that the word YELLOW is not capable of distinguishing either.
A few things to think about when adopting a colour as a trade mark:
- Consider whether you should rather adopt a combination of colours which are easier to register as a trade mark than a single colour. For example, Bunnings has registered their store front combination of colours of green, white and red with Bob Jane Tyres similarly following suit for their yellow, blue and red colours.
- The single colour should not serve a utilitarian function in relation to the goods for example, the colour silver which reflects light. A good example of a non-functional colour is the well-known red soles of Christian Louboutin high heeled shoes.
- The single colour is not purely for ornamental or aesthetic purposes (Christian Louboutin red soles again) and is not the natural colour for the goods. Stihl registered the colour orange for chainsaws.
- The single colour is not commonly used in the marketplace for the goods so that other traders have a legitimate need to use that colour for the same goods. The colour blue is registered for pre-coated metal building frames.
- It will be easier to register a single colour as a trade mark if the goods or services are very limited.
- Special effort must be made to educate consumers through advertising for example, that the colour or the word referring to the colour, is being used as a trade mark. For example, when you see YELLOW/the colour Yellow, you know it’s a Telstra directory.
- When filing an application for a colour mark it is essential to correctly describe the colour because there is limited opportunity to amend the description at a later stage.
So, if you were going to register a single colour for business directories, what colour would you choose to avoid the problems that Telstra and Sensis had in this case? Share your thoughts in our LinkedIn group, Amplify your Brand by Griffith Hack Trade Marks.
The lesson to be learned is that if you are thinking about adopting a single colour as a trade mark, you need to choose your colour carefully and commit to a strategy for registration early on. If it’s done right from the beginning, a registration for a single colour can be just as effective as a registration for a distinctive word mark.