SAMUEL LONDESBOROUGH
LW556 – INTELLECTUAL PROPERTY LAW
SUPERVISOR – ALAN STORY
RESEARCH DISSERTATION
Should Colours be protected by trade mark law? What problems may arise in
protecting them?
4,565 Words
1
ABSTRACT
There has been much debate over whether or not colours should be registered as trade
marks, and thus protected by law. It is true that colours do share characteristics
inherent with other ‘signs’ that can be registered, and it is also true that as signs, they
are able to distinguish between products. As a result, the UK, US and other countries
have begun to enforce colours as trademarks. This research will examine, from a
structuralist perspective, the qualities of ‘signs’, and how they are capable of
distinguishing between products, whilst considering the problems associated with, and
potentially arising from, registration.
2
Introduction
Trade marks may represent the first contact consumers have with brands. They
provide consumers with the opportunity to recognise the origin of a product, or rather,
the origin of a brand, whether on product labelling, or in magazine or television
advertisements. A trade mark’s ability to symbolise brands is arguably their most
important function, as it is the distinction between objects, and the signification of a
particular brand that provide trade marks with their economic value. Moreover, the
economic function of trade marks is dependant on the identity of a brand, and viceversa. It is estimated that in 1986, Coca-Cola was worth $14billion, of which half of
that figure represented the worth of the brand identity, embodied in the brand’s trade
mark1. Everything embodied by the trade mark is intangible, surely highlighting their
huge economic worth. Thus, the protection of trade marks becomes necessary, to
protect both the sanctity of the idea of a brand, and its associated economic interest.
This economic interest may also represent the driving force behind the decisions of
many trade mark infringement cases – with the result perhaps being determined to
provide the best economic result.
Trade marks are often taken, in their everyday meaning, to represent text and logos, or
basic signs, which, through special use, become associated with a particular brand.
Trade marks can, however, also include colours, sounds and even scents. This
dissertation will focus on the use of colours as trade marks.
Drescher “The Trasnformation and Evolution of Trademarks – From Signals to Symbols to Myth” 82
TMR 301, at p301
1
3
Whilst there is nothing within the language of either the Trade Marks Act 1994, or in
America, the Lanham Act, to prevent the registration of colours as trade marks, until
relatively recently, the courts did prohibit this. However, in Smith, Kline and French
Laboratories Ltd v Sterling-Winthrop Group Ltd2, the House of Lords held that marks
can subsist as “the scheme of colouration from the coloured pattern presented to the
eye”3, and that colours can constitute marks even where they cover the entire surface
area of a product . By implication, this would seem to include individual colours.
In order to determine if colours are able to be registered by trade mark law, this
dissertation will closely examine the nature of colours as signs, and how they may be
used to distinguish between products. Through this examination, the main arguments
against the protection of colour trade marks will also be analysed. American cases
will be referred to throughout, as they are useful in highlighting the qualities of any
trade mark, although the basic definition of trade marks, as contained in the Trade
Marks Act 1994, will be also be referred to.
Colours as “signs”
The Trade Marks Act 1994 defines a trade mark as “any sign capable of being
represented graphically which is capable of distinguishing goods or services of one
undertaking from those of other undertakings”4. Therefore, in order to determine if
colours should be protected by trade mark law, it is necessary to establish if they are
capable of being protected. Whilst it is self evident that colours, by very definition,
2
Smith, Kline and French Laboratories Ltd v Sterling-Winthrop Group Ltd [1976] RPC 511
Stated in Horton, A. A. “Designs, Shapes and Colours: A Comparison of Trademark Law in the
United Kingdom and the United States” (1989) European Intellectual Property Review 11(9), 311
4
Trade Marks Act 1994 s. 1(1)
3
4
may be represented graphically, a further examination of both their nature as signs,
and their consequent ability to distinguish goods, is required.
A trade mark is essentially a ‘sign’, and through focusing on the nature of ‘signs’, a
structuralist approach may be taken. Signs, through an ability to convey meaning, can
be used to identify, narrate and even legitimise our perception of reality. When signs
become attached to specific objects or ideas, both are provided with meaning.
Saussure argued that within this system exists, a ‘structural relationship’, and the sign
itself may be separated into both the signifier and the signified5. The former may be
defined as the words, colours, shapes and sounds that infer an object or idea, and the
latter, as the object itself. Barthes commented that the “associative total of signifier
and signified constitutes simply the sign”6. Essentially, in the absence of either the
signifier or the signified, both become devoid of meaning. A ‘table’ cannot exist
without the notion of table and the notion cannot exist without the table itself.
Whilst the above is especially true of spoken language, it may also be applied to nonverbal forms of communication, including image representations7. Images, working as
signs, may be classified as either icons, indexes, or symbols8. The Icon functions as a
sign through a resemblance with an actual object, the index, through a factual or
causal connection with an object, and the symbol, through a rule associating itself
with an object9. Colours may operate as signs in all three categories. For example, as
5
Saussure, in his Course in General Linguistics, pioneered the scientific study of language as a series
of signs.
6
Roland Barthes’ Mythologies, discussed in Structuralism and Semiotics, Hawkes, 1977, p130-134
7
“It is…clear that human beings communicate by non-verbal means and in ways which must
consequently be said to be either non-linguistic or which must have the effect of ‘stretching’ our
concept of language until it includes non-verbal areas” (Hawkes, Structuralism and Semiotics, 1977,
p125).
8
Argued by Pierce, in his Collected Papers (1931-58), and discussed in Hawkes, 1977, p127
9
Ibid
5
demonstrated by Re Owens-Corning10, the colour pink may symbolise roof insulation,
by virtue of both its physical resemblance to, and factual connection with pink roof
insulation. Also, through the creation of a myth, examined below, the sign, “pink”
may associate itself with roof insulation.
It is arguable that most trade marks are composed of a number of signs, including
text, shapes and colours, which, when used in conjunction, work to communicate
specific ideas. In this context, the signs are interdependent, and are unable to operate
individually. A series of words forming a single, unique sign can be registered as a
trade mark. However, single generic words cannot. For example, the word ‘cup’, a
generic term, could not be registered as a trade mark for a cup because doing so
would prevent all other cups from being labelled as such. Colours are generic and are
widely used, so should the same not be applied? Moreover, it may be argued that
colours do not possess the arbitrary qualities of other visual signs11. However, are
individual colours still capable of possessing the same distinctive qualities as those
marks containing a series of signs? It was argued by the defence in the US case of
Qualitex v Jacobson12, that there is no need for the protection of colours because they
may be contained within other trade marks13. Whilst this notion was rejected by the
court, such an argument obviously offers no protection to stand alone colours.
10
Re Owens-Corning Fiberglass Corp. 774 F.2d 1116 (1985)
“[In Re Owens-Corning Fiberglass Corp.] A dissenting judge argued that to function as a trade mark
colour must be confined to "some definite arbitrary symbol of design'.” Horton, “Designs, Shapes and
Colours: A Comparison of Trademark Law in the United Kingdom and the United States” (1989) EIPR
11(9), 311 at p314
12
Qualitex Co. v Jacobson Products Co. 514 U.S. 1300 159 (1994)
13
Discussed in Schwarz, “The Registration of Colours as Trade Marks” (1995) EIPR 17(8) 393, at
p395
11
6
Colours, even in isolation can become attached to a particular object or idea, and
indeed do. Red has come to signify passion and green, envy, and therefore, when we
see, or think of these colours we may therefore be reminded of all their associated
denotations and connotations. Colours are, however, non-arbitrary, and thus, in order
to work as viable symbols, require the creation of new connotations.
The process of attachment, through which signifiers become anchored to particular
objects, is essentially cultural, and is therefore determined by the particular shared
ideologies of a society at any given time. As such, society may agree that the word
‘table’ should refer to an actual table, or the colour red to passion, and so on.
Consequently, the ‘sign’ may, over time become synonymous with the thing itself,
and be codified. It is obvious that the more a sign is used in a particular context, and
the more it is recognised by sectors of society, it will be more readily anchored to an
object or idea. With regard to trade marks, this may be achieved through intensive
advertising aimed at target consumers, eventually leading to a strong associative
relationship between the mark, and a particular product. It may be argued that this is
indeed a necessary process in establishing individual colours as viable signs. Whilst
other trade marks, including brand names, may be instantly recognisable owing to
unique characteristics, the generic nature of individual colours may make it necessary
to establish a new meaning that can be uniquely identified with a specific product, and
this must be achieved through advertising. In other words, it is the connotation of the
colour sign that is important in establishing uniqueness, not the sign itself.
7
‘Myths’
It appears that once a sign is anchored, it is set in stone. On the contrary, the process
of attachment and codification is fluid, and signs may repeatedly adopt new meaning.
This is important if colours are to align themselves with certain products and brands.
Where there is a well established sign, it may attract secondary meaning through
either extended use, or the creation of ‘myths’. Barthes defines a myth as “the
complex system of images and beliefs which a society constructs in order to sustain
and authenticate its own sense of being”14. Myths are carved out of signs, although
will provide the symbol with new meaning beyond that of the original sign. As
Barthes argues, the associative total of the pre-existing sign equals the signifier, or
‘form’ of the myth. This, in conjunction with its signified, or ‘concept’ forms the
signification. Myths may be created through either a products continued association
with a specific colour, whereby the products own myth is transferred to the colour, or
where brand owners actively formulate a myth through advertising campaigns. In any
case, advertising will certainly help to speed up the process though which society
attaches particular meaning to a colour symbol.
To use ‘Nike’ as an example, the Nike symbol will, on a basic level, signify Nike
products. However, attached to these products is a ‘myth’ of quality, sportsmanship
and youth culture. This is because Nike trainers are used by professional sportspeople,
and, through both the passage of time, and a series of rigorous advertising campaigns,
have attached themselves to youth culture. The Nike symbol, used in all advertising,
represents the brand, and its connotations must therefore typify everything the myth
14
Cited in Hawkes, Structuralism and Semiotics, 1977, p131
8
purports. Drescher argues that “the myth which obsesses the mark on a symbolic level
insinuates itself into the product denoted by the mark at the material level”15.
Therefore, the brand, the sign, and the myth become inextricably linked. Barthes
argues that in some situations, the myth may nullify the meaning of the pre-existing
sign, “in other words, myth operates by taking a previously established sign (which is
‘full’ of signification) and ‘draining’ it until it becomes an ‘empty’ signifier”16, and it
is this that allows myths to attach new meanings to colours. For example, the colour
red, which is normally taken to signify passion, could be used as a mark for branded
construction tools. Through extensive use, this colour will become the signifier for
that particular brand. That product’s own mythical system may then be eventually
transferred to the colour itself, so that the colour effectively becomes a representation
of the myth. Additionally, the brand-owners may, through advertising, choose to
construct a myth that, within the context of power tools, will eventually separate the
colour red from its original meaning, giving it new identity.
The myth, as previously explained, creates a new hierarchy of meaning, or ‘secondary
meaning’. In Qualitex v Jacobson Products Co17, it was held that by virtue of a
particular myth, a product is taken to have acquired this new secondary meaning
“when in the minds of the public, the primary significance of a product feature…is to
identify the source of the product rather than the product itself”18. Therefore, the
importance of a myth in its capacity to denote origin, and therefore a whole set of
other assumptions such as product quality, must not be underestimated.
Drescher, “The Transformation and Evolution of Trademarks – From Signals to Symbols to Myth”,
82 TMR 301, p310
16
Ibid
17
Qualitex Co. v Jacobson Products Co. 514 U.S. 1300 159 (1994)
18
Ibid, at p163
15
9
The quality associated with particular brands and their trade marks may therefore be
primarily attributed to the communication of myths. In the consumer consciousness, a
product with a certain sign may appear ‘better’ than generic products. A pair of Nike
trainers, for example, may be viewed as better than a pair of unbranded trainers,
simply because they carry the famous ‘Nike swoosh’. If associated with a particular
brand, the same can certainly be applied to colours. The colour of a leading brand’s
products and their packaging may sometimes become synonymous with the type of
product itself “as a form of generic code or visual cue”19, and so it may be argued
that its use by others is justifiable. In the UK, the supermarket chain Sainsbury’s used
a gold lid for their premium coffee20, although the brand leaders of coffee, Nescafé,
had also produced packaging with a gold coloured lid21. The quality associated with
Nescafé had become attached to its gold coloured lid, and, it may be argued, therefore
became synonymous with the quality of certain types of coffee. In other words, a
consumer would perhaps only recognise a jar of coffee as being of good quality if it
had gold coloured packaging.
In the US case of Inwood Laboratories Inc. v Ives Laboratories Inc22, the same
colouring was used for both a generic and branded drug. It was held that because
consumers associated the colouring of the drugs with their ability to heal, the
colouration served a functional purpose. A sign is functional “if it is essential to the
use or purpose of the article or it affects the cost and quality of the article”23. Despite
19
Mills, cited in Trade Marks in Theory and Practice, p149
Ibid
21
Ibid
22
Inwood Laboratories Inc v Ives Laboratories Inc. 456 US 844 (1983)
23
Ibid, at p850
20
10
this, it may be argued that colour itself, as an aesthetic medium, is rarely integral to a
product’s utility24, except perhaps where it exists as a stand-alone sign.
If a colour does form an integral part of a product, and must be imitated to ensure the
commercial success of the competition, it may be argued that its use should not be
restricted.. This approach, taken by the District Court in the aforementioned case and
upheld by the Supreme Court, seems rather cynical, as rather than promoting the free
use of generic signs, it seems more focused on ensuring the continuation of a healthy
economy. However, with this is mind, it must be reconsidered that the main reason
behind the protection of intellectual property, and particularly trade marks, is to
ensure their economic exploitation.
In addition to communicating rudimentary ideas that already circulate within a
society, colours can also communicate specific ideas from one individual or group, to
another, indicating origin. This is clear in the case of the artist, who communicates
their ideas to the viewer through their painting. Moreover, the viewer is aware of the
origin of those ideas – it is clear that the painting was created by that artist. This may
also be applied to colour marks. As previously explained, forms of advertising
communicate specific ideas about a product or brand from the brand-owner to the
consumer, and may be used to perpetuate a myth and establish new colour
signification. When viewed, a sign may then both denote the origin of a product, and
relay the ideas communicated by the myth.
When considering all of the above, it becomes apparent that colours can operate as
viable signs, however, do they truly have an ability to distinguish between brands?
24
Schwarz, “The Registration of Colours as Trade Marks” (1995) EIPR 17(8) 393, at p394
11
An ability to distinguish?
The very nature of signs dictates that they must be capable of distinguishing between
other signs, and thus distinguish between objects and ideas. For example, within our
linguistic system, we are able to distinguish between individual words. As such, there
will often be little confusion over the ideas communicated. Although individual
colours can be distinguished between, there are only a finite number of colours
available for use, and this may cause problems if individual colours are to be
registered as trade marks. Moreover, where the same colour is used more than once,
the signified may become confused. Whilst it may be argued that the finite number of
existing colours would render it impossible to distinguish between goods, it may be
counter-argued that because colours are by nature polysemic, that is, capable of
conveying many different ideas, they can, if used in a particular context, distinguish
between products. The language in s.1(1) of the Trade Marks Act 1994 only requires
that signs are able to distinguish between products of different undertakings, and so if
this is satisfied, the colour in question will be capable of being registered as a trade
mark.
Where a single colour is used by more than one company for similar products, or visaversa, it follows that the sign will fail to be unique. Under s.3(1)(b) of the Trade
Marks Act 1994, registration of a mark will be refused if it devoid of any distinctive
character, that is to say where it is identical with an earlier mark and used for identical
goods. Registration may also be refused under s.5(2) of the 1994 Act, where a sign is
identical with an earlier mark and is to be registered for similar goods, or where a
similar mark is to be registered for identical goods. This would implicate that similar
12
colours, as non-arbitrary signs, should not be used for like goods. When assessing the
distinctiveness of a colour, the possibility of confusion between signs must be
addressed. In infringement proceedings, the court will assess at what point a colour
becomes too similar with a pre-existing trade mark, quantifying the “likelihood of
confusion”25. If a consumer cannot distinguish between products by virtue of their
mark, there is shade confusion. Therefore, the sign may not be distinct enough and
under s. 5(2) of the Trade Marks Act 1994, may not be registered as a trade mark.
However, it must be recognised that the theory of shade confusion in itself is not a
viable argument against the general protection of colours as trade marks, as the courts
must always assess the likelihood of confusion as a necessary portion of any trade
mark infringement action26.
Within the UK, there has been contention between EasyGroup, and Orange
Telecommunications27, whose coloured symbols, each a bright orange, are virtually
identical. EasyGroup proposes use of their colour sign within the telecommunications
industry. Their (unregistered) sign has gained a degree of secondary meaning in its
ability to identify the origin of their products, including budget airline services and
banking. However, Orange holds a trade mark for its shade of orange ‘pantone 151’,
and whilst the shades are subtly different, with each communicating different ideas to
the user, it may be argued that their concurrent use within the telecommunications
industry would cause shade-confusion amongst consumers, and thus render
EasyGroup’s sign indistinctive. Within the 1994 Act, it is therefore seems unlikely
Schmidt, “Creating Protectible Color Trademarks” (1991) 81 TMR 285, at p289
The colour confusion theory was rejected by Qualitex for this reason. Schwarz, “The Registration of
Colours as Trade Marks” (1995) EIPR 17(8) 393, at p394/5
27
Reported in “Easy brand’s future may not be orange”, Day, J, The Guardian Newspaper, 16th August
2004
25
26
13
that EasyGroup’s symbol will be registered as a trade mark for telecommunications,
or will succeed in an action against Orange.
Whilst marks subsisting as a series of signs are usually able to distinguish between
similar products, for example, Vodafone’s sign is distinguishable from Orange’s, with
individual signs such as colours, this can become difficult. Therefore, the context in
which colours are used, and myths used to create secondary meanings, become
important in establishing and maintaining distinctiveness. If, through the process of
attachment outlined above, a colour becomes synonymous with a product, then it may
be argued that it has gained ‘secondary meaning’ and is thus distinctive.
In the case of Re Owens-Corning Fiberglass Corp28, it was held that the colour pink,
through being used by the applicant to colour their fibreglass for a number of years,
had acquired a ‘secondary meaning’. Through this, consumers associated the colour
pink solely with their fibreglass. The same was essentially held in Qualitex29. In this
case, the petitioners had used a green-gold colour for the press pads they had
manufactured since 1957, although in 1991, the respondent company began using a
similar colour on their own press pads. In determining whether or the green gold of
Qualitex’s press pads had gained distinctiveness, the court looked to whether or not,
through being associated with the manufacturer, the colour had gained a new
secondary meaning.
As explained above, through the process of attachment, this secondary meaning may
essentially be achieved through continued use of a particular colour as a symbol,
28
29
Re Owens-Corning Fiberglass Corp. 774 F.2d 1116 (1985)
Qualitex Co. v Jacobson Products Co. 514 U.S. 1300 159 (1994)
14
which will in time incorporate certain ‘myths’. However, as the court argued in
Qualitex, this is dependant on the exclusivity of colour use with regard to a specific
product. It may be argued that where several products concurrently use similar
colours, the colour cannot attach more meaning to one product than the other and
vice-versa, and thus, no one product is more worthy of gaining trade mark protection
than the other. Moreover, the co-existence of two non-arbitrary symbols may lead to
confusion amongst consumers, surely defeating the rationale behind the existence of
the trade mark, the primary function of which is to allow consumes to distinguish
between products30. In addition to assessing the exclusivity of the colour, the court
also assessed how the product was advertised. The court may additionally consider
consumer surveys to determine if the colour has acquired a secondary meaning.
After distinctiveness is established, the court must then determine the functionality of
the symbol. This effectively means that where a sign is fundamental to the social
utility of a product, or constitutes its natural colour, then it is cannot distinctive, and
should not be registered as a mark31.
Colour Depletion
As previously explained, if a colour is able to exist as a sign and distinguish between
products, then it can be registered as a trade mark. Once a colour has overcome the
hurdle of establishing itself as a distinctive sign, there are further practical arguments
against its protection as a trade mark. These are, the theories of colour depletion and
30
See Introduction
Discussed in Schmidt, “Creating Protectible Color Trademarks”, (1991) 81 TMR 285, at p288. Also
see p7 of this dissertation where I discuss functionality with regard to the assimilation of generic
product type and the signs of branded products.
31
15
shade confusion, and the doctrine of functionality32. The latter two have already been
examined above, and remain important in considering the distinctiveness of a sign.
Colour depletion purports that there are a limited number of colours, and so where
colour signs are registered as trade marks, the number that remain available to other
brand-owners becomes restricted. Moreover, as more colours are registered as marks,
the number will continue to deplete. In Campbell Soup Co. v Armour & Co.33, the
plaintiff company, who are known for the famous red and white labelling used on
their food products, sought to prevent the defendant’s from using the same coloured
packaging on their respective food products. Whilst it is clear today that these colours
existed together as a distinctive sign, it was held that the plaintiff’s were wrong in
requesting the right to have exclusive use of the coloured sign. The exclusive use of a
sign leads to monopolisation, and permitting the use of the colour mark in that case
would in turn allow other manufacturers to monopolise other colours, until the list of
available colours becomes depleted. However, this theory was rejected by the US
Supreme Court in Qualitex, which held that a limited colour supply in some industries
did not justify a ‘blanket protection’, as in most cases, enough colours are available
for use34. Such reasoning may be attributed to a need to ensure the continued
commercial exploitation of signs as marks, particularly within the context of the fairly
recent drive towards the creation and subsequent registration of colour marks35.
Outlined by Schmidt in “Creating Protectible Color Trademarks” (1991) 81 TMR 285
Campbell Soup Co. v Armour & Co. 175 F2d 795 (1945)
34
Schwarz, “The Registration of Colours as Trade Marks” (1995) EIPR 17(8) 393, at p395
35
Theories such as colour depletion and shade confusion had restricted the use of colours as marks. As
such, although there was no clear statutory definition of ‘trade mark’ within the US ‘Lanham Act’
which explicitly or impliedly barred the exclusive use of colour, the courts were nonetheless, by virtue
of the aforementioned predominant arguments, extremely reluctant to offer colour marks any
protection. Only within the past twenty years has there been a move towards the relaxation of these
theories and the protection of colours as trade marks, culminating with the case of Qualitex. This case
dismissed all criticisms of the protected usage of colour signs except ‘functionaility’.
32
33
16
In any case, it may still be argued that the use of individual colours as marks may lead
to colour depletion. If the creation of marks is dependant on the free use of individual
signs, then colour depletion will inhibit the creation of new marks, and thus a brandholders ability to communicate ideas about their products will be seriously
compromised. As previously explained, signs are capable of communicating various
ideas, including the origin of a product, its brand image, and even its quality. Thus, if
brand-owners are unable to convey these ideas through their marks, they may be
placed at a disadvantage with the consumer. As a result, their products may, through a
lack of unique branding, even be perceived as generic. Producers may also lose the
opportunity to charge inflated prices for their goods. The cost of a product is often
determined by how it is branded, with its mythical associations often legitimising its
price. As previously explained36, the value of most large brand- holding companies is
calculated through the value of its real property and intellectual property. With regard
to the latter, where a company is unable to establish a solid brand identity that
becomes anchored to a sign, it may be argued that it will have no discourse within
society. Therefore, the value of the ‘brand’ will not be quantified, and consequently,
the value of the company will be negatively impacted upon. Lastly, it may be argued
that the protection of a finite number of colours may lead to an increased number of
infringement litigations where every other colour mark infringes each registered
colour trade mark. Moreover, how could these colours be enforced in different
countries, where different significations dictate their meaning?
36
See introduction
17
Conclusion
In conclusion, the structuralist critique of colours as signs highlights that they can,
even in isolation, operate as fully functional language systems, and as such, work to
distinguish between products. This is established particularly through the perpetuation
of myths, which serve to attach further secondary meaning to pre-established signs.
Therefore, colours can function as trade marks, and are indeed able to satisfy the
requirements of the Trade Marks Act 1994, allowing them to be registered. A
structuralist examination of colours reveals that there are no real reasons why colours
should not be protected by trade mark law. On the contrary, this is encouraged by
their functions as signs. However, where the same colour is used to represent a
product of a different undertaking than the registered mark, the structural system of
the registered may begin to erode unless it is firmly rooted in the consciousness of a
society. It is this consciousness that allows people to distinguish between goods.
Shade confusion appears to represent a persuasive argument against the protection of
colours as trade marks, although, as demonstrated, only becomes an issue when
determining if there is trade mark infringement. The theory of colour depletion is
persuasive, and demonstrates that unless there is stricter control with regard to the
registration of colour marks, then it could become a problem. All of the possible
effects of colour depletion outlined above work to defeat the very notion governing
the protection of trade marks, which, as with all forms of intellectual property, is to
secure commercial exploitation. Through the process of colour depletion, brands will
grow unsustainable, and markets will become controlled by a select few colour trade
mark holders, eliminating free competition. A balance should be struck between both
the need to promote the creation of colour signs, which itself requires the freedom to
18
use colours, and the protection of those signs, which will restrict the number of
colours that can be used. This could be achieved through the creation of a statutory
procedure specifically governing the use of colours as trade marks, that goes beyond
the ‘secondary meaning’ test of Qualitex.
Despite this, individual colours are not exclusively representative of all trade marks,
and most marks are made up of many signs that work together to communicate
meaning. A huge reservoir of potential marks, coupled with an exact ability to
distinguish between existing marks, including colours, could counter the effects of
colour depletion.
19
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20
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U.S.
Qualitex Co. v Jacobson Products Co. 514 U.S. 1300 159 (1994)
Re. Owens-Corning Fiberglas Corp. 774 F.2d 1116 (1985)
Campbell Soup Co. v Armour & Co. 175 F2d 795 (1945)
Inwood Laboratories Inc v Ives Laboratories Inc. 456 US 844 (1983)
UK Statutes
Trade Marks Act 1994
Other
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“Easy brand's future may not be orange”, by Julia Day, The Guardian Newspaper,
Monday August 16th 2004
“Trademarking Colours”, by Julia Day, The Guardian Newspaper, Monday August
16th 2004
“Executive Intellectual Property Bulletin”, Schwegman, Lundberg, Woessner, Kluth,
http://www.slwk.com/CM/IPBulletins/IPBulletins30.asp
“Color Matters: Who Owns Hues – Color Trademark Disputes”, by Jill Morton,
www.colormatters.com/color_trademark.html
“Supreme Court Allows Color to be Registered as a Trademark”, April 6th 1995,
Gibney, Anthony and Flaherty LLP,
http://www.gibney.com/LegalNews/Record/colortrademark.cfm
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