There are some colours that consumers associate with particular brands. For example, EasyJet is known for its distinctive orange livery, while Cadbury is known for the dark purple colour which it uses on the packaging of some of its chocolate bars and in its advertising. However, it is far from straightforward for brands to register colours as trade marks, and thus to take advantage of the monopoly rights afforded to trade mark proprietors.
The challenger bank, Monzo, recently encountered difficulties in its attempts to register “hot coral” as a colour mark in the UK. Monzo uses hot coral in relation to its debit cards; it certainly makes their cards stand out from those offered by most other banks. According to the UK Intellectual Property Office (“IPO”) website, Monzo originally applied for the mark in April 2018 but withdrew its application earlier this year. This may have been prompted by the EU IPO’s rejection of Monzo’s appeal in relation to its parallel application to register an EU colour mark for hot coral. According to one report, Monzo may seek to register hot coral as a mark in the future. So what do brands need to keep in mind if they want to register colours as trade marks?
The courts have acknowledged that there is a public interest in “not unduly restricting the availability of colours for other traders who market goods or services of the same type as those in respect of which registration is sought” (Libertel (C-104/01) and Heidelberger Bauchemie GmbH (C-49/02)). This means that the IPO is likely to be reluctant to grant a colour mark. That is not to say that the IPO won’t grant a colour mark per se; provided that an applicant can satisfy the requirements for registration under the Trade Marks Act 1994 (the “1994 Act”), as interpreted by the courts, the IPO will register the mark. That, of course, is much easier said than done.
The 1994 Act provides that a mark must be distinctive in order to be registrable. This is a key requirement for any mark that a brand may want to register. In most cases, it is relatively easy to satisfy the requirement of distinctiveness in relation to logos, word marks or shape marks. However, for a single colour to be registrable as a trade mark, case law and historic applications indicate that it must have acquired distinctiveness through use by the applicant. This is a very significant hurdle to overcome.
While the hot coral debit cards issued by Monzo are certainly distinctive in the literal sense of the word, Monzo has only had its banking licence since 2017, making it difficult for Monzo to evidence that it has acquired distinctiveness through use since then. Indeed, on reviewing the IPO website, it does not appear that Monzo argued the mark had acquired distinctiveness when making its application. Over time, if Monzo continues to extensively use the hot coral colour as it grows its business (without other businesses also using the colour for similar goods/services), Monzo’s use of the colour may acquire the necessary distinctiveness to satisfy the legal test for registration under the 1994 Act. At present, however, one must assume that the IPO did not consider Monzo’s use of the colour to be sufficiently extensive, and therefore sufficiently distinctive, to justify granting their application.
There is no magic formula to determine how long and how extensively an applicant should use a colour before the IPO will grant a colour mark. That being said, would-be applicants should note that single-colour marks are only likely to be granted where the colour mark has truly become a badge of origin for the applicant in relation to specific goods or services. Unfortunately for Monzo, applying a colour to a debit card is not a new phenomenon. This will have served to weaken Monzo’s claims that their hot coral debit cards act as a badge of origin.
The IPO’s approach to the registration of colour marks has changed over time. In previous years, the IPO may have been willing to entertain an application to register a colour mark, where the applicant simply provided a sample of the colour in question, but now applicants are required to be more specific. Applicants can achieve the necessary specificity by providing a sample of the colour as well as a description designating a particular colour using an internationally recognised colour identification code (Libertel (C-104/01)). For example, Monzo referred to “Hot Coral Pantone 805 C” in its application (Pantone being the provider of an internationally recognised colour identification system).
The requirement to be specific goes beyond fully particularising the colour to be registered. Brands can enhance their chances of successfully registering a colour mark by narrowing the goods and services in respect of which the mark is to be registered. This will help to mitigate the public interest concerns that the IPO is likely to have in relation to any application to register a colour mark. Some brands have gone further, by illustrating how they intend to use the colour in their application (e.g. on a petrol station forecourt). Again, the IPO is more likely to grant an application to register a colour mark if the applicant only intends to use the mark in a very narrow category of goods or services.
It has long been difficult for brands to register colour marks, particularly when they are comprised of just one or two colours. It is, therefore, unsurprising that Monzo was not successful in its attempts to register hot coral as a trade mark. Brands considering an application to register a colour mark should bear in mind that single-colour marks are only likely to be registrable in exceptional circumstances. Marks comprised of two or more colours are more likely to be registrable, but the requirement for distinctiveness will need to be satisfied in all cases. This can still be a high bar for applicants to overcome in relation to colour marks comprised of relatively few colours. Whether seeking a registration for a trade mark comprised of one or more than one colour, brands should take care to ensure that the goods and services specified in the application are tightly defined to help address concerns around the public interest in granting a registration for a colour. These pointers are not exhaustive and the IPO will always assess each application on its merits in light of the evidence provided by the applicant and any interested third parties. For brands considering an application to register a colour mark, it is essential that they obtain proper legal advice to maximise their chances of success.
Squire Patton Boggs is an international law firm specialised in advising businesses on issues like the management of trade mark portfolios, including the registration of trade marks, whether in the UK or across multiple territories. Please contact Kerry Lee, Sara Leno, or Claire Evans for more information.