In today’s globalized marketplace where companies want to sell their products all over the world, it is little surprise that many are seeking to use the international language of color to differentiate their products.
But how can IP owners protect color marks, and what are the national limits of protection in a world where trademark law harmonization still has a long way to go?
Back to the case law
These are some of the issues that will be examined in a session today on protecting and enforcing color marks. Slobodan Petosevic of Petosevic will moderate the international panel and provide a European take on the issue. Rae Yan of Hogan Lovells in Beijing will provide an Asian perspective, while Christopher Turk of the H.D. Lee Company will consider the state of the law in the United States.
“There is no definite solution to the question in any legislation, especially for color per se,” says Petosevic. “Therefore it makes sense to come back to the case law.”
The panelists will consider recent court decisions to draw out the trends affecting owners and would-be owners of color marks. One of the recent cases likely to be discussed is a dispute between T-Mobile and Aio. At the beginning of 2014 T-Mobile obtained an injunction preventing AT&T subsidiary Aio Wireless from using a plum color in its marketing and advertising after the Court found that it was “confusingly similar” to the magenta shade used by T-Mobile.
The panelists will also discuss the legal repercussions of Christian Louboutin’s attempts to claim exclusivity to the use of the color red on the sole of shoes.
But they will also consider legislative developments that determine how IP offices and courts will assess color marks.
New opportunities in Japan
One topical example likely to come up during the session is Japan. In line with the international trend for offering IP owners greater protection for non-traditional marks, Japan has amended its law to allow the registration of color marks (along with sound marks, moving marks and hologram marks). The new rules came into force on April 1. But the liberalization of the law on what constitutes a trademark might not open the door to the protection of a single color, say commentators. Vital to determining registrability will be whether color marks have distinctiveness, a test that is likely to be applied strictly and might exclude colors that are only used to improve the function or look of a product.
Around the world, IP owners seeking protection for color marks have had greater success when they use color in combination with other aspects of a mark, because it is often easier to argue that the mark is distinctive. An example of this in practice are applications made by agricultural machinery company John Deere in the United States. The company was denied the color green in a 1982 dispute with Farmhand Inc, after it failed to establish that a secondary meaning exists for the color often referred to in the industry as “John Deere green.” The USPTO did, however, allow the company green and yellow in In re Deere & Co after it provided evidence that established that the colors had become distinctive of the goods.
How to get a color mark
Obtaining trademark protection for a color is not easy. To maximize your chances, says Slobodan Petosovic, you need to plan your strategy carefully. First, consider engaging the services of an experienced trademark attorney who is able to advise on the chances of registration in all of your target markets.
Second, ensure that your marketing colleagues work closely with your legal team. “Don’t just follow marketing principles, otherwise it will lead to problems down the road,” he says. “A successful registration of a color or a color combination relies on the joint work of lawyers and marketing professionals.”
Lastly, although many IP owners would like to own the trademark rights to color per se, the legal barriers to ownership are high. “Focus on acquired distinctiveness,” says Petosovic. “You won’t be able to do it overnight but look at the case law and develop a long term strategy in the light of it”.
CW21 Protecting and Enforcing Color Marks: An International Perspective takes place in Room 6B from 11:45 am to 1:00 pm tomorrow.
