Colour me Brat – the challenge of protecting colour marks

Earlier this year, Charlotte Aitchison, the English singer songwriter who goes by the professional name Charli XCX, announced on X “Goodbye forever brat summer,”.

As we reach the end of 2024 and look back at the year drawing to a close, this was arguably one of the cultural episodes of the year.  So much so, BRAT was recently announced by Collins Dictionary as their “word of the year”.  Along with the word, the neon green colour played an equally important role in the brat summer phenomenon.

https://www.bbc.co.uk/news/articles/cy87x5n0g24o

The colour found its way onto, to name only a few, Kamala Harris’ presidential race, this year’s catwalks at London Fashion Week, and other fashion capitals; but it did not make it onto the UK Trade Mark Register as a colour mark.

                             
https://www.vogue.co.uk/article/charli-xcx-brat-green      https://www.theguardian.com/us-news/article/2024/jul/23/kamala-harris-charli-xcx-brat

Why Charli XCX did not attempt to protect the colour with a registered trade mark, we will probably never know.  Perhaps trade mark registration would be antithesis to the Brat Summer aesthetic and registration would just restrain the intended viral nature of it.  Or perhaps her legal counsel advised her on the difficulties of registering colour marks, and she thought better of it.

What is a colour mark
Trade marks traditionally cover words and logos, but colour marks are a subset of so-called “non-traditional trade marks”.  Other examples are sound marks and shape, or three-dimensional, marks.  Traditional or non-traditional, a colour mark is a true and proper trade mark and is – theoretically at least – capable of registration if it meets the basic requirements of the first paragraph of the relevant legislation in both the UK and the EU.  This can be summarised as being clear and concisely defined, and capable of distinguishing the goods/services offered under the trade mark by its owner from those of other traders.  This is known as the “essential function” test.

This requirement is simple enough when it comes to traditional marks – the word mark that you type in or the logo mark that you upload describes the mark with absolute certainty. But how do you clearly describe a colour mark?  Do you describe how the colour will be applied to the product? Do you upload a picture of your product that features the colour?  Do you mention the Pantone code? How broad, or narrow, should that description be?

Guidance on colour marks from recent case law
The confectionery giant, Cadbury, would be well-placed to answer these questions which were scrutinised in court cases involving the rival confectionery company, Nestlé.

In 2013, Cadbury applied to the UKIPO to register three colour mark applications with differing descriptions at the UKIPO in a scattergun approach to colour mark protection.

(Mark 362) The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods. [1]

3019361 (Mark 361) The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods. [2]

3025822 (Mark 822) The colour purple (Pantone 2685C), shown on the form of application. [3]

Nestlé opposed each application on the basis that the marks lacked clarity and were not capable of designating trade origin and on the basis that the marks lacked distinctive character.

The matter escalated to the High Court[4], during which time the battling brands agreed terms and entered into a co-existence agreement.  Nonetheless, the Comptroller-General of Patents, Designs and Trade Marks intervened to make sure that the High Court case proceeded on public policy grounds because the clarity objection was an area of law that was “uncertain and of some importance”[5].

It was held that Marks 362 and 822 did meet the clarity requirement and therefore could be registered but not so for Mark 361.

The ratio decidendi for refusing registration of Mark 361 was that it was not possible to tell from the description, how the colour mark would be applied to the packaging.  Without further wording on this in the description, the application of the colour mark to the packaging could take on many forms and so fell into the so-called “multiplicity of forms” problem: it did not meet the clarity threshold required by the law.

Using the same reasoning in relation to Mark 362, where the description went further than in Mark 361 to describe how the colour mark was to be applied to the packaging, the court construed from the wording that the colour mark could only be applied to the packaging in one way, that being “to the whole visible surface”, and hence there was no multiplicity problem that would be contrary to the clarity requirement.

Finally, in relation to Mark 822, where no description was provided at all, the multiplicity of forms problem becomes immaterial.  The colour in and of itself is the mark (so in essence, a pure colour mark) and the Pantone code provides sufficient certainty to meet the clarity threshold.

The High Court decision in this case provides brand owners with useful guidance on how to describe colour marks in trade mark applications.

Let’s not forget though that Nestlé also opposed on the basis of a lack of distinctive character.  Here again, non-traditional marks have greater difficulty in meeting the distinctiveness threshold compared to traditional trade marks.

It was held in the 2003 European Union Court of Justice Libertal case[6] that a pure colour mark, such as Mark 822, can indeed function as an indication of origin and therefore a trade mark, but importantly, it was noted in the judgement that:

Consumers are not in the habit of making assumptions about the origin of goods based on their colour or the colour of their packaging, in the absence of any graphic or word element, because as a rule a colour per se is not, in current commercial practice, used as a means of identification. A colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking.

Effectively, the above means that colour marks will be on the backfoot due to a presumed inherent lack of distinctiveness, and the applicant will have to make the case that the colour has taken on a secondary meaning as an indication of origin through extensive use.

For this High Court case, the non-distinctiveness basis was dropped as an issue, but in any event, meeting the distinctiveness threshold for Cadbury, who first used the colour in 1914 as a tribute to Queen Victoria’s favorite colour, would likely have been straightforward.  Ask yourself how many of us, wandering down the chocolate aisle of our local supermarket, would be able to associate the purple get-up with Cadbury products before getting close enough to see the Cadbury logo.

Final comments
The Cadbury colour mark decision teaches us that if a descriptor is to be used in a colour mark application, the wording should be drafted carefully to ensure that the mark is described in one form so as to meet the clarity requirement.  We have also learned that by not using a descriptor at all, whilst easily meeting the clarity requirement, the distinctiveness requirement may then trip one up.

Looking at this High Court decision more broadly, with clear guidance now in place one may have expected brand owners to be more confident in applying for colour mark applications, with a resultant uptick in such applications at the UKIPO.  This has not been the case, however, leaving practitioners to wonder whether this is because colour marks face such a high hurdle and low success rate that the investment cannot be justified.

Maybe the recent emphasis placed on colour by Brat Summer this year and Barbie’s pink last year play more of a role than case law in heightening the interest in colour marks for brand owners.  Research by psychologists has shown that consumers rely on many elements of branding to make their purchasing decisions and rarely place reliance solely on the brand name or logo, meaning the protection of these non-traditional elements of branding, particularly in the FMCG sector, is more critical than ever before.

https://www.facebook.com/HeinzUK/posts/prepare-for-your-world-to-turn-deliciously-pink-introducing-heinz-barbiecue-sauc/833605835461616/

So, although Brat green was not registered at the UKIPO, we nonetheless wait to see if Brat Summer leaves its mark by demonstrating the relevance and value of colour marks as part of a complex brand protection strategy.

[1] UKIPO Application number UK00003019362 [2013]

[2] UKIPO Application number UK00003019361 [2013]

[3] UKIPO Application number UK00003025822 [2013]

[4] Société des Produits Nestlé S.A. v Cadbury UK Limited [2022] EWHC 1671 (Ch)

[5] Société des Produits Nestlé S.A. v Cadbury UK Limited [2022] EWHC 1671 (Ch) [4]

[6] Libertal Groep BV v Benelux-Merkenbureau [2003] Case C-104/01 [65]