Can colour be a trademark?
Although in theory it is possible to register a trademark in the form of a single colour, in Polish practice such marks are vanishingly rare. Essentially, such protection is possible only if the applicant proves “secondary distinguishing power”—showing that the target customers for the goods clearly associate the colour with a specific company.
One company that recently attempted to register a single colour as a trademark was the Cyprus-registered Play Brand Ltd, affiliated with the mobile phone operator Play. In 2010 Play filed a certain shade of purple with the Polish Patent Office as a trademark for communications services:
The Patent Office refused to register the colour as a trademark even though Play presented evidence of secondary distinguishing power. Play challenged the decision by filing a complaint with the province administrative court. The court upheld the position of the Patent Office and denied the applicant’s claim.
Secondary distinguishing power
The court stressed that under the European case law, granting rights to a trademark in the form of a single colour without the need to prove secondary distinguishing power is possible only in exceptional circumstances, particularly where the number of goods for which the trademark is filed is strictly limited and where the relevant market is highly specific.
Play argued that the market for communications services is a narrow and specific market, because there are a small number of players and high entry barriers. The court disagreed, pointing out that the size of the market is determined primarily by the number of customers and the degree of development of the given segment of services. But the market for mobile phone services and other communications services is targeted to a very broad group of customers and mobile phones are used by an overwhelming cross-section of the society in different age groups. This makes it a market for universal services.
In order to show that a mark in general has taken on secondary distinguishing power, the court held, the applicant has to prove that it has been actually and intensively used for a certain period in the same form in which it is filed. The primary evidence of secondary distinguishing power includes public opinion surveys, commercial evidence, advertising, and expenditures on promotion.
More than meets the eye
With respect to the secondary distinguishing power of colours, however, the court also relied on the notion of “exhaustion” of colours, which holds that the number of colours the human eye is capable of recognising is small and generally limited. For this reason, the theory goes, no one should “own” a colour or have an exclusive right to use it. Colours should remain in the public domain, and thus free access to colours by all businesses should be maintained.
The court also cited the theory of confusion of shades, which assumes that human perception is so limited that the average observer is unable to distinguish numerous shades of various colours. Most trademarks function in an environment where decisions to buy goods or use services are taken quickly, without deep reflection on the part of consumers. In such situations, customers could hardly be expected to analyse and compare similar shades of colours and then associate one shade with the origin of the product.
Moreover, the court found that Play used purple to a varying extent, with different intensity and—particularly relevant here—in differing shades, meaning that consumers could not grow accustomed to a specified manner of presentation of the colour as a trademark.
In advertising, in shops, and on its website, the name Play is also used, together with numerous graphic elements, including a characteristic purple and white splotch, which is the first thing that users notice.
All of this meant that the colour purple does not predominate in the designations used by the mobile operator. Here the colour is perceived not as an identifier of the origin of the services of the specific operator, but as a decorative element complementing the message associated with the main trademark of Play.
Time is telling
Apart from the intensity of use, a key factor for determining whether a trademark has taken on secondary distinguishing power is the length of time the mark has been used. Poland’s Industrial Property Law does not expressly require long-term use of a trademark, but the use must be long enough for customers to have linked the designation with a specific business.
The Play brand entered the Polish market in 2007. The application to register the indicated shade of purple as a trademark was filed in May 2010, and the application had to show that the mark had obtained secondary distinguishing power by that time. The surveys were conducted in July and August of 2010. Based on the dates and the evidence, the court found that three years was a short period for use of the trademark and the studies did not prove that users of mobile phone services undeniably linked the colour purple with Play. Thus it could not be found that the colour purple had obtained secondary distinguishing power as a trademark for Play.
Play disagreed with the judgment of the province administrative court and filed a cassation appeal with the Supreme Administrative Court, which was denied in a judgment dated 24 March 2015.
Proving the secondary distinguishing power of a trademark is not an easy task. Thus it is no surprise that there are not many trademarks taking the form of a single colour, and just a handful have been registered without proof of secondary distinguishing power. Examples of such Community marks (not from the Polish Patent Office) include black for facial tissues, orange for crop cultivation consultancy, green for car rentals, purple for pipe plugs, and yellow for cow-milking equipment.
In most cases, the authorities require proof of the secondary distinguishing power of a colour, including a showing that the colour has been used intensively, uniformly and for a long time. All of the evidence should pertain to the trademark in the form in which it is filed and should predate the filing of the application. Moreover, the trademark in the form of a single colour should always have been used in the same shade, and the evidence of use of the mark should demonstrate that the colour is the dominant element. The trademark should have been used for much longer than three years. Only under such circumstances can it be found that the colour has taken on an independent meaning for customers, indicating to them that the goods or services originate from a certain source.
In the practice of the Polish Patent Office, single colours have successfully been proven to have obtained secondary distinguishing power in the case of purple for chocolates—and orange for mobile phone services.
Monika Wieczorkowska, Intellectual Property Practice, Wardyński & Partners