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IP Ingredients, Part 12: Exploring colours in the food & drink sector – overcoming hurdles and leveraging colour trade marks
April 2024
We will all recognise as consumers an instance of when we used the colour of a product or its packaging to identify a specific brand that we wanted to buy – take the ‘golden’ arches of McDonalds as an example.
In what can often be a crowded space, we use these brand assets on a daily basis to pick out the brand we want. The significance of colour in the food and drink sector for building brand association, recognition and assisting consumers in the navigation of stores and shelves is therefore clear.
However, UK and EU trade mark law continues to be somewhat hesitant to grant trade mark protection to colour marks. The reluctance stems from a base line assumption that consumers don’t typically rely on colour marks alone as indicators of commercial origin. Consequently, while it is possible to obtain trade mark protection for colour marks, it should be anticipated that additional hurdles will need to be overcome in the application process, to reverse that base line position and achieve registration.
If this can be achieved, a colour trade mark can be a crucial part of a brand’s enforcement strategy, supporting the brands ability to colour block on shelf and ensure that other products surrounding them are not using the same or a similar colour to create confusion. The value of this is obvious in that it will make it easier for consumers to identify their products quickly and stop others from riding off the back of the brand’s reputation and marketing efforts as well as expenditure.
In a recent case between Lidl and Tesco, Lidl was successfully able to stop Tesco’s use of a yellow circle on a square blue background in connection with its “Clubcard Price” loyalty discount scheme. The Judge concluded in that case, that Tesco had taken unfair advantage of the reputation enjoyed by Lidl in their mark which is also a yellow circle on a square blue background and that Tesco’s efforts to convey value was made easier and more effective by reason of the connection with the Lidl mark since Lidl’s reputation is for low price value. While the mark involved is not a ‘true’ colour mark for the purposes of this discussion, this is a great and recent example of how obtaining trade mark protection for colours associated with a brand can make a real-life impact on competitive advantage.
In order to increase the chances of successfully obtaining a registration for a colour trade mark, below are some points to consider:
Clear and Precise Representation
A significant challenge applying to register a colour trade mark is meeting the criteria for clear and precise representation. For traditional trade marks, like words, this is relatively simple, but for colour trade marks this can often by tricky.
For example, Cadbury has for many years been involved in various disputes with Nestlé over the registration of their Cadbury colour purple. Nestlé’s objection was predominantly on the basis that the mark applied for did not constitute a ‘sign’ as is required. In several cases, this argument was upheld with the Court confirming that the mark described in Cadbury’s application lacked the required clarity, precision, self-containment durability and objectivity to qualify for registration.
To avoid similar objections, it is recommended that it first be identified with the marketing and advertising team what the precise colour is that should be protected. Together with an image of the colour, there should be included a reference number, such as a pantone number, so that you can specifically identify the shade that you would like to protect. For example, the Cadbury purple is Pantone 248C.
Then ensure that you are clear how the marketing team intends to use the colour and/or in which format consumers recognise the colour being associated with your brand the most. The latter point will be beneficial when putting together your evidence which I will discuss later on. It will also enable a description of the mark, which will be included in the trade mark application, to be properly crafted. Ideally the description should avoid any ambiguity or any wording which could lead to an interpretation that the mark covers multiple forms for example, by implied reference to other visual materials or colours.
Research should also be undertaken to ensure that the colour is not something generically used in the industry already, as this will significantly reduce the chances of success, for example, blue for water or green for plant based products.
Creating and Gathering Evidence of Acquired Distinctiveness
In practice, it is nearly always the case that, in order to overcome an objection raised on the grounds that a colour trade mark is not distinctiveness, it is necessary to submit evidence of acquired distinctiveness.
The evidence should be robust and demonstrate that consumers have come to recognise the colour mark applied for as acting as a badge of origin on its own. Evidencing fame or market recognition is unlikely to be sufficient for success. Instead, the evidence should focus on proving that the colour mark is being used by consumers to identify your products, and that they are relying upon it to do so without additional reference to other brand assets, such as the brand name or logo.
While traditional use on advertising and packaging will be the norm, the creative utilization of the colour mark on these and other point-of-sale materials can be crucial to increase consumer recognition. So teaming up with the marketing and/or advertising teams to discuss how that can be achieved, e.g. by ‘look for’ advertising or special editions that make more prominent use of the colour, is crucial.
Also crucial, is the gathering and storing of those materials so that in the future these can be compiled together with a witness statement to show how the colour has gained the ability to function as a trade mark. In addition to marketing and advertising materials, it is typically useful to have examples of turnover and advertising figures, as well as statements from independent third parties in the industry who can attest to the colour having become recognised as a badge of origin for that business.
Where possible, start gathering such evidence from the start.
Conclusion
In conclusion, while registering colour trade marks poses challenges, they can be a useful and valuable tool in the brand owner’s arsenal. For the food and drink industry they can enable the brand owner to keep the space around their products clear of others using the same or a confusingly similar colour and allow them to carve out distinctive identities, leaving a lasting impression on consumers.
To obtain protection for a colour trade mark, it is more important than ever that marketing/advertising and legal teams work in tandem both to clearly identify the colour to be protected and then to create and gather the evidence that will be needed to overcome the legal hurdles.
For any questions relating to the above, please contact the author, Tanya Waller at [email protected].
