Colour is one of the important features of a brand. It represents the personality of a brand and impacts customers’ decision-making process. For that reason, businesses do not easily change the colour scheme of their branding. Speaking of trade marking the branding elements in colours, applicants frequently ask:
“Can I change the colours of my trade mark in the future?”
“We have recently updated the colour scheme of our branding, do we need to file new applications for my trade marks in new colours?”
In order to answer those questions, we need to understand two different concepts about colours in trade marks – “trade marks in colours” and “colours as trade marks”.
Trade marks in colour
Colours can be a feature of signs that are registrable as trade marks. For example, a word in colour, a device in colour, a shape in colour etc. In Australia, applicants may file a trade mark representation in colour without needing to claim colours even if the trade mark is or will always be used in particular colours. Where a trade mark is filed in colour but does not include an endorsement for colour, it will be registered for all colours pursuant to s 70 of the Trade Marks Act 1995 (Cth).
- Limitation and restriction to colours
When the signs of a trade mark application, by themselves, lack inherent adaptation to distinguish the applicant’s goods and services from those of other traders, the application will be objected to under section 41 of the Trade Marks Act 1995 (Cth). In that circumstance, limiting or restricting the trade mark to only be used in a particular colour or colours may enhance the distinctiveness of the trade mark and render it to be registrable.
Limitation of colours will be entered as an endorsement of the registration. It is important for applicants to understand that a colour limitation or restriction narrows down the scope of the trade mark registration in infringement proceedings and as a citation against a subsequent application.
Colours as trade marks
What a lot of applicants may not know is that a single colour by itself or in a combination of other colours may be used and registered as a trade mark. Examples of colour trade mark registrations in Australia are
(Registration No. 1120622 for Colour Purple) of Cadbury chocolates
(Registration No. 1414010 for Colour Blue) of Tiffany jewellery
The process of registering colour trade marks can be much more complicated than that of registering common signs such as words or devices. Distinctiveness of colour trade marks is a challenge that applicants will need to face and overcome.
In general, a single colour, when it is applied to the surface of the goods or the packaging of goods, is difficult to be registered as a trade mark because one colour is considered to be of low degree of inherent adaptation to distinguish. Applicants who apply for trade mark registration for a single colour in respect of goods need to present significant evidence showing that the colour has been extensively used as a trade mark by the applicant and from that use, the colour has acquired sufficient distinctiveness. Compared to one single colour, multiple colours in a combination may possess a greater degree of inherent adaptation to distinguish and be more likely to register.
In certain circumstances, colours are not registrable.
(a) Colours serve functional purposes
A colour or colours in a combination that serves a functional purpose are not registrable as a trade mark. For example, silver or white are the common colours for light reflection purposes. As such, silver and white are not registrable as trade marks for goods that are used for light reflection purposes.
(b) Colours convey a generally accepted meaning
Colours that have developed a generally accepted meaning in industry or in the public lack the inherent adaptation to distinguish. For example, red is a colour that is accepted to denote fire extinguishers, and red, blue, white, black, yellow, and oatmeal are colours accepted to indicate various content of fire extinguishers. These colours are unregistrable as trade marks for fire extinguishers.
(c) Colours which are common to the trade
Natural colours of the goods or the accepted standard colour of goods in an industry, for instance, brown, yellow, and white for sugar, are colours common to trade, which are not inherently adapted to distinguish the goods of one trader from those of others. The reasons are registering the colours as trade mark hinders other traders to produce the goods or increases the costs of other traders to manufacture the goods. Therefore, such colours are unregistrable as trade marks.
The impact of colour changes in branding on trade marks registrations
Returning to the frequently asked questions at the beginning of this article: “can I change the colours of my trade mark in the future” and “do I need to file new applications for trade marks in a new colour scheme”, answers may vary depending on the registrations.
Assuming a registration is sought for a trade mark that consists of signs other than colours and the registration does not claim any colour limitation or restriction, the trade mark is taken to be registered in all colours. As such, the registered owner can use the trade mark in any colour. Accordingly, when a new colour scheme is employed in branding, the existing registration still protects the trade marks in a new colour. Therefore, no need to file new applications.
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