The goods specified were a variety of chocolate products. The Registrar upheld the application over an opposition by Nestle, who appealed.

In Sieckmann v Deutsches Patent und Markenamt Case C-273/00, a smell could not be registered as it was not capable of being graphically represented. The point of the requirement for graphical representation is to define the mark with clarity and precision.

Libertel Groep BV v Benelux-Merkenbureau Case C-104/01, held that a colour per se (not spatially defined), in this case orange for a telecomm company, is capable of constituting a sign, depending on the context, as long as there is a specific description such as a Pantone Code.

In Cadbury, Nestlé accepted the hearing officer’s finding that the colour purple was distinctive of Cadbury but argued that:

1. Cadbury’s mark is not a sign;
2. Cadbury’s mark does not satisfy the Sieckmann criteria for graphical representation;
3. More than one colour was implied in Cadbury’s mark through use of the words “the predominant colour”
4. “Spatial delimitation” was necessary; and
5. The concept of “context” in Libertel had been misapplied by the Principal Hearing Officer.

Nestlé also submitted that the reference to purple being the predominant colour in the mark description was a recognition that another colour or colours would be present and meant that the mark was a colour combination mark and so would fall foul of Heidelberger. So, even if Cadbury could be entitled to a pure colour registration for purple (Pantone 2685C) for the relevant goods, that was not the mark they had applied for.

The Court concluded that the use of the word “predominant” in the description for the mark did not introduce any more vagueness or uncertainty than was already present and acceptable in a trade mark registration of this kind even without the written description. Birss J said the use of another colour with the predominant colour would not form part of the mark. The mark was not claiming a combination of colours: “A need for a systematic arrangement or spatial delimitation as discussed in Heidelberger does not arise as a result of the wording of the description of the mark in this case.” Cadbury’s registration was capable of being a sign under Article 2.

The US approach
As in Europe, it possible to obtain a colour mark per se, but the bar is set very high. It must be established that the public has come to associate the single colour with a brand (“secondary meaning”) and that the colour is not primarily functional. For example, in the Cadbury case, if everyone in the industry used the colour purple to indicate that the chocolate to which it is applied is milk chocolate, then the colour could be functional and not source-identifying. Famous (to lawyers at least!) prior examples of colour as a trade mark in the US include Owens-Corning “Pink Panther” pink fiberglass building insulation and the greenish colour of dry cleaning pads in the Qualitex case, in which the US Supreme Court confirmed that colour is not per se impossible as a trade mark.

In the UK Cadbury case discussed above, the claimed colour mark was in use on packaging. In the United States, any kind of claim of trade dress or colour as a mark is scrutinized even more closely when the colour or trade dress claim is in the product itself, particularly when that feature may also have an aesthetic purpose.

In a recent case the Federal Court of Appeals in New York considered the case of colour as a trade mark as applied to goods in the fashion industry; where features that might indicate source also tend to have an aesthetic function. Louboutin introduced its signature high end shoe with the bright red lacquered soles in 1992. Louboutin was granted a US trade mark registration for the red sole 2008 upon acquired distinctiveness. In 2011, YSL began selling a line of monochromatic shoes, including red shoes, featuring one colour on the entire shoe (including the sole). Louboutin sued YSL for, among other things, infringement of its Red Sole trade mark. The Court of First Instance, the Federal District Court in New York, denied Louboutin’s request for a preliminary injunction, holding that single colour marks are inherently “functional” in the fashion industry because they serve an aesthetic purpose, and that any registration for such a trademark should be held invalid.

On appeal, the Second Circuit reasoned that a single-colour mark can indeed merit protection, even in the fashion industry, if it has acquired secondary meaning, as in this case. The Second Circuit decided, however, that Louboutin failed to provide sufficient evidence that the secondary meaning extended to shoes where the red sole did not contrast with the upper shoe, i.e., where the entire shoe is red like the YSL shoe at issue in this dispute, so YSL was not held to infringe. The case demonstrated that even though colour is not per se impossible to protect as a trade mark, enforcement will still prove difficult.

Concern over monopolies
This concern of creating perpetual monopolies is clearly in the minds of the courts on both sides of the Atlantic when considering the registration and enforcement of colour marks. While colour per se is registrable in Europe and the US, the European courts are clear that the mark must meet the criteria set down in Libertel and the US courts will continue to require a clear secondary meaning.

By Kate Swaine, Wragge & Co LLP and Janet Satterthwaite and Jackie Patt, Venable LLP

Further reading - US cases
In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985)
Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995)
Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., Docket No. 11-3303, September 5, 2012