In the pink: colour marks & overreaching rights holders

Birkett Long regularly makes European Community Trade Mark applications. Recently, a couple of those applications concerned icons and slogans in a distinctive shade of pink.  

Our client, which is a global leader in computer software and gaming, has been using this shade of pink as key colour definitive of its corporate identity for some time.

We filed the application at the European Union Intellectual Property Office (EUIPO) and it subsequently passed through examination and was published. Publication is usually the point at which it appears on the radar of prospective opponents who might be looking for marks in certain classes or with certain elements to oppose; indeed, the IP department offers these watching services to a variety of our clients.

One such watcher was the German company Deutsche Telekom AG and their representatives, a leading firm of city lawyers. The letter drew attention to the registered trade mark rights of Deutsche over a shade of magenta, which is shown on the right.

It will come as a surprise (and even an affront!) to some readers that a colour can be registered as a trade mark at all. The Sieckmann case long ago established that provided the graphical representation of a colour is clear, precise, self-contained, easily accessible, intelligible, durable and objective, a colour mark will be allowable. In practical terms, this means that an application ought to have not only a sample of the colour, but also one or more Pantone® or similar references to a particular shade or similarly precise description. Colour is one of a number of unusual categories of mark which we advise on; another recent case involved giving advice on the registrability of hand gestures and movements, so if you wanted to register a colour, it might be possible to do so.

Returning to the Sieckmann case, the Court recognised that members of the public are not generally in the habit of making assumptions about the origin of goods based on their colour or the colour of their packaging. As such, the court indicated that in the case of a colour per se a finding of distinctiveness would be inconceivable apart from in exceptional circumstances, and particularly where the number of goods or services in which the mark is applied is very restricted and the relevant market very specific. 

Applying this to our facts, we could see that Deutsche Telekom was overreaching because it sought to claim a right to a range of different colours and shades far beyond the shade for which it had a registration, and a short piece of commercial research revealed to us that our client wasn’t the first to receive a letter on this subject. Unfortunately, not all clients are as well advised as ours and as such, capitulation was common; as it was, we were able to despatch the aggressor via a short teleconference comprising a brief tutorial on colour marks and a firm request to withdraw the threat.

Cease and desist letters can often cause a lot of concern for a company – especially if they overreach in this way. It is always a good idea to have them properly analysed before responding, since it can often reveal the opponent to be a paper tiger. 

For a no-obligation phone call to discuss how we can assist you and your business, please contact me on 01206 217600 or email me ippost@birkettlong.co.uk

In the pink
The contents of this article are intended for general information purposes only and shall not be deemed to be, or constitute legal advice. We cannot accept responsibility for any loss as a result of acts or omissions taken in respect of this article.