STRATEGY FOR OPTIMISING THE PROTECTION OF YOUR TRADEMARK
A trademark is a distinctive sign used as an indication of the origin of the products or services of a business:
- It is a sign of public recognition
- It is a tool used to gain customer loyalty
- It is a means to differentiate your product from your competitors’
It is therefore essential to carefully establish a strategy for trademark applications and for the use of trademarks with a view to optimising the protection of your rights by answering the following questions at an early stage:
- Must I register my trademark in colour or in black and white?
- What can I register as a trademark and which of my trademarks should I protect?
- Should I file a broad description of the products/services or one that is limited to my business?
- In which countries, and how and when, should I protect my trademarks?
- Should I search for earlier trademarks and in which countries?
- In whose name should I register my trademarks?
- Should I use my trademarks and if so how and when?
- Should I monitor my trademarks and should I systematically take action in the event of counterfeit or an infringement of my rights?
LAVOIX will be answering these various questions in its IP ALERTs.
For now, let us shed some light on issues relating to the registration of trademarks in colour or in black and white.
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SHOULD I REGISTER MY TRADEMARK IN COLOUR OR IN BLACK AND WHITE?
Colour is a strategic choice for businesses because of its emotional impact and the fact that it can be easily identified by the public. Trademarks are therefore often in colour.
Under French and EU Community law, a trademark in colour can be protected, whether it involves a particular colour scheme or an isolated colour (that must not be a primary colour).
Article L.711-1 (c) of the French Intellectual Property Code (Code de la propriété intellectuelle) in fact stipulates that a trademark can be composed of one or more colours i.e. that it can consist of "colour arrangements, combinations or shades".
- The arrangement of colours consists of a specific presentation of a number of colours or a single colour represented in a shape or drawing.
- Colour combinations are defined as a collection of colours in a certain type of composition.
- Shades of colours are specific hues that result from a blend of primary colours.
With regard to Community trademarks, colours or colour combinations may both constitute a valid trademark.
The following coloured trademarks have been thus registered:
- Community trademark in the name of Red Bull GmbH for energy drinks
Description: blue (Pantone 2747C), silver (Pantone 877C)
- French trademark in the name of Hermès International for Class 3, 14, 18, 25 and 35 products and services
Description: Orange colour described as follows, according to the LAB reference of the International Commission on Illumination L: 58.32, a: 41.91, b: 48.06, with a delta E of 2 (measurement taken with a D 65/10o illuminant)
Therefore, if protection is sought for a trademark's specific colours, the trademark application must include a colour sample. It will also be published in colour in the official bulletins, making third parties aware of it.
Since the LIBERTEL decision of the Court of Justice of the European Union rendered on 6 May 2003, jurisprudence is now unanimous: "A colour may be protected provided that it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective."
The simple depiction of the trademark in colour on the application form, even with the words "trademark in colour", is therefore not sufficient to be able to claim a right over the colours. The trademark must also be accompanied by the designation of the colour, a precise description of the combination of colours and the colour scheme, and, in particular, an internationally recognised identification code, such as a Pantone code (which is itself a registered trademark).
This obligation is in fact set out (i), for French trademarks, in the decision of the Director of the INPI No. 2014-142 bis (Article 2 (d) - "If the trademark is only composed of the representation of a colour or a combination of colours, the description must include an internationally recognised identification code for said colour"), and (ii) for Community trademarks, by Rule 3 (5) of EU Regulation 2868/95, "The colours which make up the trademark shall also be indicated in words and a reference to a recognised colour code may be added".
Furthermore, a colour shade must be distinctive, i.e. it may not be generic, common or descriptive of the products or services referred to. An economic actor will not be granted a monopoly over the use of a colour shade if the colour is typically associated with the type of product or service concerned. For example, a business specialised in the nautical sector cannot take ownership of a shade of blue with no other distinctive element (specific layout, colour combination, figurative elements, etc.). It must be noted that a distinctive character may be acquired through the long or intensive use of the colours by the right holder.
The decision to register a trademark in colour or in black and white impacts the protection it will be granted: in fact, a claim to a colour constitutes a restriction for the registered trademark as, without this claim, its holder would have an exclusive right to use its trademark in any colour. Therefore, when the trademark includes other characteristic elements (logo, drawing or verbal elements), a registration in colour could limit its protection and is only recommended when the colour or colours are an important element of the trademark.
The protection of a combination of colours is strictly limited to the combination registered and does not grant the holder any exclusive right of use over each colour taken separately.
However, the protection of a trademark in colour is not strictly limited to the shade registered but extends to similar shades with the same arrangements or combinations even if the colours are slightly different: each assessment will be carried out in concreto by the authorities or courts by comparing the trademarks at issue as a whole in order to determine whether a risk of confusion could exist in the minds of consumers. Of course, the more arbitrary the colours are in terms of the products and services concerned, the broader the protection will be for these combinations or shades of colours.
In conclusion, colour contributes to brand recognition by the public and may have a determining influence on consumer choices. When colour is the essential distinctive sign or one of the essential distinctive signs of a trademark, and when one is sure that the colour will have a certain durability, the trademark should be registered in colour to ensure that it does not fall vulnerable to non-compliant use (in other colours).
Publication date : September 2015