Color trademark is considered as nontraditional trademarks where at least one color is used to perform the trademark function of uniquely identifying the commercial origin of products or services.
This issue was addressed by the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights, which broadened the legal definition of trademark to encompass "any sign... capable of distinguishing the goods or services of one undertaking from those of other undertakings". The signs may be figures, words, a color combination or a combination of such signs.
Despite the recognition which must be accorded to color trademarks in most countries, the graphical representation of such marks sometimes constitutes a problem for trademark owners seeking to protect their marks, and different countries have different methods for dealing with this issue.
1. Color trademark protection in Vietnam
In Vietnam, article 72 of Intellectual Property Law 2005 (amended 2009) provides :
Article 72.- General conditions for marks eligible for protection
A mark shall be protected when it satisfies the following conditions:
- Being a visible sign in the form of letters, words, drawings or images, including holograms, or a combination thereof, represented in one or more colors;
- Being capable of distinguishing goods or services of the mark owner from those of other subjects.
The law of Vietnam accepts protection of color trademark under the provisions of TRIPS. In fact, Vietnam has accepted protection of such trademark for a long time, from its inception of legislation on protection of industrial property rights (Regulation on trademark - 1982). However, the criteria for protection of color trademarks according to the current law are as follows:
i) It is sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colors.
ii) A single color or a color combination not constitute a distinguishable sign are not to be protected as a trademark.
Until now, many domestic and foreign companies have filed single color or color combination applications for registration in Vietnam. The colors were used for advertising, packaging goods, a backdrop for events, painting shops or color of uniform of employees, for example:
Lilac color of Milka Chocolate Company
However, the aforementioned colors were refused protection as a trademark. E.g. Dunhill Tobacco Company (UK) applied for trademark registration in Vietnam; the applied-mark was dark-red on the cigarette packages being widely sold in the market in many countries. The applied-mark was refused protection by the following reasons:
- A single color could not to be considered as a sign.
- As the number of natural colors was limited, so it could not confer the exclusive rights on a trademark holder to use a color that eliminates the right of others to use that color.
Dunhill made a complaint and proved that the color on the label had been widely used for its tobacco products for decades in many countries around the world, thus acquired substantial distinctiveness. However, the National Office of Intellectual Property dismissed the complaint.
Therefore, to be protected on such color, Dunhill Company applied the following trademark application of “Dunhill & Figures”.
Trademark registration was accepted for protection in Vietnam.
The protection of color trademark in foreign countries
The protection of color trademark in foreign countries is not simple. Almost the same in Vietnam, a single color trademark application is not easy. We should study the following cases:
* 2004 Cadbury UK Ltd Company filed a trademark application in England for a single color for chocolate products (class 29). An applied-mark was simply a purple color (Pantone 2685C).
The examiner of UK Intellectual Property Office refused trademark application on the grounds that: the applied-mark was not likelihood of distinguishing. After that, Cadbury submitted the evidence proving the sign acquired substantial distinctiveness through wide-use from 1914; the application had been accepted and published on the Gazette 5/2008.
In August, 2008, Nestlé (Switzerland) filed an opposition to the above application on the basic of i) the color-applied for registration was not distinguishable; ii) it was not a sign. However, the UK Intellectual Property Office rejected the opposition and remained the decision to grant registration for Cadbury.
Nestlé sued the case in the Supreme Court in London England, however, October 01, 2012, the Supreme Court dismissed the Nestlé’s claims.
Nestlé continued to appeal to the Court of Appeals. In December 2013, the Court of Appeal upheld Nestlé to deny the applied-trademark of Cadbury.
* Color trademark application of Milka in Poland
The single color trademark registration in Poland was debated for many years. And until now the Polish Patent Department granted only to a single color trademark “lilac-purple” color for famous chocolate products of Milka. The decision was issued after many years as a matter of argument between Milka Chocolate and Anpin Gold Chocolate (Switzerland). The registration was accepted through a number of trial levels on the basis of Milka used a lilac-purple continuously, in a long-term for just chocolate products, along with advertising strong campaigns, hence this particular color had become commercial indications for the products of Milka.
However, at the same time, this “lilac-purple” color application of Milka was refused protection by Argentina Patent Office in Argentina’s territory.