Colour Trademark

What it is

The modern US rule comes from Qualitex Co. v. Jacobson Products Co., which a unanimous Supreme Court decided on 28 March 1995. Qualitex had used a special green-gold on the dry-cleaning press pads it sold from the 1950s, and registered the shade as a trademark after a rival began using a similar one. The Ninth Circuit had barred the registration. The Supreme Court reversed, writing that there was "no rule absolutely barring the use of color alone". A colour that has acquired secondary meaning can identify and distinguish a brand, much as a descriptive word can. The Court also set a limit. A colour cannot be protected where it serves a significant non-trademark purpose, and it noted that the worry about colour depletion applies only where competition is actually threatened.

Europe set the bar differently. In Libertel Groep BV v Benelux-Merkenbureau (Case C-104/01), judged on 6 May 2003, a company sought to register orange for telecommunications services. The Court of Justice said that colours possess little inherent capacity for communicating specific information, that a colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking, and that distinctiveness without any prior use is inconceivable save in exceptional circumstances. It also gave weight to a public interest in colours staying available: the number of colours the public can tell apart is limited, a small number of registrations for certain goods or services could exhaust the entire range, and there is a public interest in not unduly restricting the availability of colours. Libertel's application failed on a separate point. A description in words did not represent the shade clearly enough, because "orange" means different things to different people. The Court noted that a widely recognised colour code, such as a Pantone reference, could supply the certainty.

The cases since apply these two lines of reasoning to particular brands, and they show how narrow the right becomes in practice.

In effect

Louboutin, United States, 2012. Christian Louboutin's registration covered "a lacquered red sole on footwear". A district court had ruled that a single colour could not be a trademark in the fashion industry, and the accused Yves Saint Laurent shoe was red all over. On 5 September 2012 the Second Circuit reversed that blanket rule, saying the Supreme Court had forbidden such per se rules. It then found secondary meaning only where the red sole contrasts with the adjoining upper of the shoe, and limited the registration to those cases. A monochrome red shoe with no contrasting sole did not infringe, and the denial of a preliminary injunction was affirmed. The court also rejected the argument that the red sole was aesthetically functional, treating that as a fact-specific question that weighs the competitive benefit of protecting the mark against the cost to competitors. This account rests on a law firm's summary of the opinion.

Cadbury, England and Wales, 2013. Cadbury's brand colour is Pantone 2685C, a purple, and its application covered milk chocolate confectionery. The application described the colour as applied to the whole visible surface of the packaging, or as "predominant" on that surface. On 4 October 2013 the Court of Appeal allowed Nestlé's appeal in Société des Produits Nestlé SA v Cadbury UK Ltd ([2013] EWCA Civ 1174) and overturned the trial judge. The word "predominant" implied other colours that the application did not describe, so the mark could cover many permutations of packaging, and the court held that this was not a single sign capable of graphic representation. It distinguished Libertel, which concerned one unchanging colour, said that allowing the registration would breach the principles of certainty and fairness, and declined to refer the question to the Court of Justice. The UK Supreme Court refused Cadbury permission to appeal on 11 March 2014, because the application did not raise an arguable point of law (UKSC 2013/0233, from the Supreme Court's permission to appeal list for March 2014).

Cadbury, England and Wales, 2022. A High Court judgment in Société des Produits Nestlé SA v Cadbury UK Ltd ([2022] EWHC 1671 (Ch)) dealt with three applications to register the same purple. One was refused because its "applied to the packaging of the goods" wording was not specific enough and its application to goods was unlimited. Another was allowed because its description, applied to the whole visible surface of the packaging, was specific enough to act as a sign of trade origin. Which way the third went is not clear from the summary read for this page. The point that carries across the cases is that the outcome turned on how each application was written.

What buyers think is a separate question. None of these rulings, as summarised, decided whether buyers link the colour to the brand. A 2004 master's thesis at Massey University compared four survey methods on the Cadbury purple and on Effem Foods' unsuccessful application to register orange for Uncle Ben's rice. All four showed a strong link between Cadbury and purple, though Cadbury was also associated with other colours, and the results suggested orange was not inherently tied to Uncle Ben's. A 2014 paper co-written by Jenni Romaniuk later proposed measuring the link through fame and uniqueness; see Brand Asset Fame and Uniqueness.

What it does not say

A colour trademark is not ownership of a hue. Every ruling above attaches the right to a shade named precisely, to goods, and in Louboutin's case to a relationship between a sole and an upper. It does not stop a competitor using red, or purple, in a different setting on different goods.

It is also not a measure of how well a brand's colour works. The courts ask whether the colour identifies one source and whether the application describes a single sign. They do not ask whether the colour helps buyers find the brand on a shelf or recall it in a buying situation, which is the argument for Distinctive Assets. The book that makes that argument, Byron Sharp's How Brands Grow (2010), notes that distinctive assets can be trademarked and that meaningful differentiation cannot. The legal half of that claim survives the cases above, with the conditions attached. The book's tables measure how different brands are perceived to be and not how recognisable their assets are, and none measures a commercial return to distinctiveness.

Finally, several of the accounts on this page come through summaries, not the judgments. The Louboutin, 2013 Cadbury and 2022 Cadbury decisions were read through a law firm's note, a WIPO Magazine article and a trade-law blog. The Libertel passages were read in the judgment text and Qualitex in the opinion as published by the Cornell Legal Information Institute. Anyone relying on a point of law should read the decisions themselves.

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