Last November a full-page colour advertisement appeared in the Evening Standard, the daily paper for London. The advertisement for easy.com was headed: "Orange want (sic) to stop easyMobile.com from using the colour orange! STELIOS THINKS THAT'S RUBBISH!" Near the bottom of the advertisement it reads: "It's hard to believe I know but...Orange are (sic) suing easyMobile for using the colour orange! As you know, all the easyGroup companies have always used the colour orange and Stelios is determined to continue doing so!"

A decade earlier in November 1995, easyGroup launched its first brand, easyJet, a low budget airline which rose to prominence in the late 1990s. As it did so the brash orange used on aeroplanes and in marketing quickly became synonymous with a cheap, reliable, no-frills means of European travel. Such was the success of the easyJet brand, the orange and white easy logo was used to sell services like rented cars, internet cafes and cruises that the consumer would consider cheap, reliable, no-frills options to the competition.

EasyGroup now plans to expand into the mobile phone market. But Orange already holds an orange colour mark covering telecommunications in the UK and argues that easyGroup's move into the mobile phone market would infringe its mark.

History of the BP Australia case

1991  BP files its initial trade mark application. 1995  Additional application made. 1997  Applications accepted. Woolworth's launches opposition proceedings. 2000  Woolworth's successful in opposition proceedings. 2000 BP appeals. December 2003  Appeal case heard. December 2004  Court rules in BP's favour. December 2004 – now  Woolworth's tries to appeal against this decision. Because this is the second appeal, the court requires leave to decide whether a right appeal should be granted.

The Orange case is not the only important legal battle. BP Australia is awaiting the outcome of its dispute with Woolworth's that began in 1991 about using the colour green in service stations. So far a final decision has not been reached. Cadbury's Australia is also set to resolve a long-running fight over the colour purple in a trial that began on March 20 2006.

Why to register

So long as a brand has a good reputation and uses a particular colour in its packaging and advertising it is susceptible to exploitation. "It's easier to catch the consumer's eye with colour than with words." says Sergio Rizzo, co-author of Non-Conventional Trade Marks and Community Law. "If you go to a supermarket and you see chocolate with, say, purple packaging you will automatically make a judgement on what this chocolate will taste like because the packaging has connotations of smell and taste. Colour is universal. With colour, you don't have boundaries in the same way as you do with names. A word in Japan could have a negative meaning, or it could sound strange." he says.

Tips for registration

Colour marks, like all trade marks, are registered for particular classes. BP, for instance, does not own the exclusive right to use green on all products, only on service stations. Unlike conventional trade marks, colour protection tends to be granted only to well-known products or services.

Following the Libertel case (2003), the European Court of Justice (ECJ) advised colour mark applicants to provide a graphical representation of the colour that is clear, precise, self-contained, easily accessible, intelligible, durable and objective. This is similar to what is required in other developed IP markets.

Would-be colour mark owners should give the trade mark office a verbal description of the colour and the relevant shade from an internationally recognized colour coding system like Pantone. Using a recognized colour coding system is more objective than a colour sample that will deteriorate over time according to the ECJ.

Colour marks are easier to obtain for colours that are more unusual, such as Magenta which was registered by Deutsche Telekom. But Ikea's bid to register its yellow and blue colour combination was rejected in July 2005 by the ECJ because its application did not show that the colours would always be used in the same way.

Heidelberger also failed to register its blue and yellow mark. Its application showed a rectangle, the top half of which was blue, with the bottom half yellow. The application said the mark was used in "every conceivable form". The combination was rejected because the term "every conceivable form" was not specific enough for the ECJ. The court said the colour combination had to be "systematically arranged by associating the colours concerned in a pre-determined and uniform way".

Combinations of colours can be registered and it has traditionally been easier to register colour combinations, but this is now thought to be changing. The Ikea and Heidelberger cases show that graphical representations of how the colours will be used with one another are necessary.

Colour monopoly?

The Pantone shade 151 colour mark which Orange holds for its mobile phones is a UK trade mark in class 9, which covers telecommunications. Orange has argued that easyGroup's move into the mobile phone market would constitute infringement even though the orange that easyGroup plans to use is Pantone shade 21.

The Pantone colour system lists about 10,000 colours. The human eye cannot recognize this many shades. This raises questions as to what constitutes infringement of a colour mark. If the human eye cannot tell the difference between the colour registered and the colour used by the competitor then it would make sense to rule infringement for use of a similar, but not exactly the same, shade.

But, where on the colour scale does similarity end? In the Orange case, how much movement of Pantone 151 towards red or yellow would have to occur before the two colours were not deemed similar?

There have been concerns that ownership gives monopoly rights to use the registered colour, creating uncompetitive market conditions. Sergio Rizzo considers this a problem but suggests maintaining competitive conditions would disadvantage the consumer: "It's difficult just to give a colour mark for one Pantone shade because you are, in effect, granting a mark for the Pantone shades surrounding the registered shade. There is a risk of monopoly, but there is a conflict between this risk and the risk of consumers being deceived by other firms."

BP Australia lawyer Darron Saltzman of Davies Collison Cave believes the monopoly argument could be considered for all trade marks: "If you register a dictionary word you're limiting the number of dictionary words that everyone else can register. Though there are many, there are not an infinite number. There is an analogy here with colour, the difference is just one of degree. Nobody has ever run an argument that a dictionary word should not be a trade mark for these reasons."

One of Germany's leading IP professors, Karl-Heinz Fezer, thinks that the problem of colour mark infringement can be looked at in the wider context of what the purpose of trade mark protection is: "Whether or not the public associates the colour's use with a particular brand is the essential factor. If the use of a colour by a competitor does infringe, the consumer will recognize the colour mark's origin."

Natural shades

In a case between KWS Saat and the Office of Harmonization for Internal Market (OHIM), the ECJ decided in 2004 that OHIM was right to reject the colour mark application for orange seeds because this was the natural colour of the seeds. The court made it clear that a colour is not distinctive unless it has acquired this status through use as a marketing tool. Because its colour had acquired the distinctiveness through functionality KWS Saat could not make this claim.

But this is not always the case. In a court battle with BP Northern Ireland, John Kelly, a fuel trader and member of the Tedcastle Group, appealed against charges of infringement by BP over its green colour mark by arguing that BP should not have got the mark in the first place. Kelly argued that green had strong connotations of Irishness and the environment. But this argument did not succeed in court because the claimed associations were said to be minor and incidental. The court also said that Irishness may have had negative connotations with Protestant customers and so it could not be argued that BP was taking advantage of this association.

So it seems that arguments of functionality are being taken into account by the courts, but there must be a good case for them to be accepted.

BP Australia

BP Australia again had to defend its right to the green mark when it took on Woolworth's. The thrust of its defence was that there was a clear basis for distinctiveness because of the history of the brand. BP gave marketing and expenditure evidence, as was the case in Northern Ireland. The evidence was not exactly the same because the historical angle had to be given in an Australian context.

BP's argument was bolstered by survey evidence that showed more than 85% of people answered that in a service station context, they associated the colour green with the BP brand.

Surveys are recognized as a useful form of evidence in colour cases. But they must be carried out by qualified market researchers to ensure they do not ask leading questions and the demographic spread is not biased.

Woolworth's argued that the schematic drawing shown to survey respondents was leading because it featured a car wash. But BP was able to defeat this claim by showing that less than 10% of BP service stations had car washes and that car washes are a generic part of service stations rather than something exclusive to BP service stations.

What next?

If the Australian federal court does not give Woolworth's the right to appeal the October 2004 decision, Darron Saltzman believes that the judge will have followed the law correctly: "The trial judge said that for colour marks to be awarded, they must be used to the point of acquired distinctiveness. This is not the case for other trade marks, which can usually be registered with the intention to use. This means that the requirements for colour mark applications are more stringent than those for word marks and this is not what was expressed in the 1995 Trade Marks Act."

Even a verdict in BP's favour would cause Saltzman to take further action. Referring to the stringent treatment of colour marks, he says: "This is a parliamentary issue and should be taken there."

Why it makes sense

Colour associations like BP's green, Cadbury's purple, and both Orange and easyGroup's orange, are built up through strong brand reputation and clever marketing. Though registration can still be tricky, colour marks, just like shape, sound or smell marks, are the thing of the future, and getting in there before one's competitor seems to be the goal of an increasing number of brand owners.