The Authors' Take - Justifications for reconsidering initial interest confusion after Interflora

Colour Trade Marks Revisited: Use and Infringement

by Joshua Marshall

Colour per se trade marks are notoriously difficult to register and, subsequently, retain.  A colour per se is a non-delimited, non-spatially defined colour or combination of colours.  Hitherto, a trade mark has been required to satisfy the Sieckmann criteria in order to qualify as a graphically represented sign.  Applicants are forced to balance (i) the certainty required to satisfy the Sieckmann criteria with (ii) ensuring sufficient flexibility to preserve the utility of registering a trade mark for a colour per se.  The jurisprudence shows that this conflict often proves fatal.  Indeed, the recent cases of Red Bull v EUIPO, Giro Travel v Andreas Stihl, and Cadbury v Nestlé confirm this difficulty prevails under Directive 2015/2436. 

Colours lack inherent distinctiveness.  They may take an infinite number of permutations, each differing in size, shape, positioning relative to other colours and the context of use.  Similarly, colour is a characteristic of anything which is not transparent or translucent and often utilised to advertise and market goods or services without conveying any specific message.  Therefore, consumers are not in the habit of making assumptions about the origin of goods based on their colour in the absence of any graphic or word element.  It is difficult to show a colour has acquired distinctiveness through use rather than simply being recognised or associated with other trade marks.

This gives rise to two issues.  Firstly, the risk of revocation of a successfully registered colour per se trade mark because: (1) the colour is not being used to serve the essential function in the sense that consumers rely on it to indicate economic origin; and (2) it is used in a way which alters the distinctive character.  Secondly, the difficulty of evidencing infringement of the trade mark through use to indicate trade origin rather than purely aesthetic use.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP).]