When using colours in internet and social media marketing strategies, companies are able to transmit values and emotions, thus enhancing the effectiveness of promotional messages. For this reason, the role of colour branding in the definition of brand identity is becoming increasingly fundamental for trademark rights. In particular, the role of eye-catching trademarks has become central to marketing strategies aimed at transmitting a distinctive message to the consumer. Here is where colour plays a powerful role in a product’s sensorial messaging and worth fighting for.
An episode that allows us to understand the power a colour can possess is represented by a stunt conceived by Tiffany & Co in 2021. The American company published through its social media a photo of the well-known “blue box” in golden yellow instead of the iconic “Robin’s Egg” colour, claiming to have changed the brand’s distinctive colour. In fact it was just an April Fool’s joke, but the collective surprise demonstrated the central role that the colour had established in defining Tiffany’s brand identity.
The CJEU case-law on colour trademark
When we think of colour marks associated with brands there are many examples that come to mind. We immediately recognize the purple of Milka chocolate, the Canary Yellow of Post-it notes, the blue of Mattei biscuits, Ferrari red, Valentino’s Pink PP, and many more.
The possibility of registering colour combinations or tones as trademarks is expressly provided for in Article 7 of the Italian IP Code, but the requirement of graphic representation made it complex to obtain such protection for many years. Later, the Court of Justice of the EU clarified that a verbal description of the colour is sufficient for registration purposes if it is clear, self-contained, easily accessible, intelligible, and objective, and if “it enables the competent authorities to carry out the prior examination of registration applications” (see C-104/01 and C-49/02). How do you graphically represent a specific colour? This requirement is met by the indication of an internationally recognised colour identification code: the PANTONE colour code.
The CJEU also ruled that the graphic representation may not give rise to doubts as to its subject matter and scope. Indeed, in the well-known Red Bull GMBH v. EUIPO case (C-124/18), the Court upheld the EUIPO’s decision and declared their two-colour trademarks invalid because they consisted of the mere juxtaposition of colours, which did not permit the consumer “to perceive and recall a particular combination, thereby enabling him to make further purchases with certainty“. It is not sufficient to graphically represent the colour combination “in the abstract and without contours” by accompanying it with imprecise descriptions, rather the representation must consist of a “systematic arrangement” in which the colours are associated “in a predetermined and constant manner”.
Finally, the CJEU has limited the possibility of registering a single colour as a trademark to exceptional cases in which the colour has acquired distinctive character over time thanks to a concrete use leading the public to associate a specific colour with the goods distinguished by it. The acquisition of such evidence is today easily obtainable through the use of social media in marketing activities as happened to Glossier for the registration of the Millennial Pink as its trademark. Indeed, that brand was able to demonstrate to the USPTO the acquired distinctiveness of the trademark’s Millenial Pink colour used for product packaging, proving its brand association carried out through a promotional campaign on social networks.
The protection of colour trademarks in Italian rulings
The principles we have just seen have been applied by Italian case-law that recently has been more inclined to recognise the individualising power of monochromatic trademarks. It took various cases to secure protection.
First, an important decision was pronounced by the Court of Milan in 2008 in the so-called Ferrari case. The judge, having ascertained the infringement of Ferrari’s unregistered colour trademark recognized its absolute qualifying value and highlighted how the actual use of the colour represents a fundamental element for the purposes of comparative assessment, recognizing its association directly with Ferrari.
Then there was the well-known case decided by the Court of Turin relating to the “jaune-orangé” colour trademark used to distinguish Veuve Cliquot Champagne. The Court of Turin recognised its validity on several occasions – most recently on 4 March 2022 – in which the Court expressed some fundamental principles on colour trademarks. In particular, the Court of Turin stated that:
– in the context of the assessment of confusability it is necessary to consider that the consumer, not usually having before him both distinctive signs, cannot compare at the same time the colour of the contested goods with the infringed colour trademark, but “only mentally compares what he sees with the imperfect memory and mnemonic image of the other“;
– the fact that the product is also distinguished by the word mark of the alleged infringer does not exclude infringement of the colour trademark, since it is necessary to consider the “interdependence between the similarity of the signs and that of the marked goods“: if the consumer is led to believe that the goods come from the same or a related company, this will be sufficient to consider there to be infringement by confusability.
More recently, there have been other decisions pronounced by Italian courts that have recognised intrinsic value of colour trademarks. However, as far as trademark notoriety is concerned, the most significant is certainly the case concerning Tiffany’s colour trademark, whose validity has been confirmed on several occasions by the Court of Milan, most recently on 10 January 2024. In justifying the validity of this colour trademark, the Judge stated that when the product, distinguished by the colour, is sold online, the risk of confusion for the public is greater because consumers cannot see “the physical specimen” and this makes the comparison between trademarks and products even more difficult.
The risk of colour monopolisation
Despite this more favourable attitude of Italian case-law towards colour trademarks, there are still few rulings confirming their validity. This is because the judge must also take into account the interest of other economic operators. Indeed, the recognition of a chromatic trademark carries with it the risk of a monopoly situation on a tone or combination of colours to the disadvantage of other operators offering the same goods and services. Already in 2003 the CJEU had highlighted this issue. The danger is that the recognition of the validity of a colour trademark, which still does not have distinctive character, unduly restricts the availability of colours for competitors. For this reason, it is essential to limit registration only to cases where the brand is able to demonstrate acquired distinctiveness. This happens more likely in cases when the connection between the product and the colour is arbitrary and trademark registration is sought for a specific colour shade with its own distinctive character. This is also the reason why both Italian doctrine and case-law excludes the registration of primary colours, going so far as to deny the possibility of exploiting for that purpose any colour that the public may consider to have its own identity. It should also be considered that the risk of monopolisation is no less in cases where the distinctive sign is made up of several colours and where the mere juxtaposition of them does not enable the economic operators “to know the scope of the protection afforded to the proprietor of the trademark” (C- 49/02). For this reason, it has been argued that in assessing the validity of trademarks consisting of colour combinations it is necessary to consider whether their use was dictated by the nature of the product. If so, it is not distinctive. In any case, what remains is to wait and see what future claims are brought to court regarding colour trademarks and how Italian decisions will impact economic competition.
