Can you register a colour as a trade mark?

The use of colour has long been an important aspect of trade - adding to product appeal, attracting attention, conveying unspoken clues as to a product's qualities and in certain cases helping consumers distinguish the goods or services of one trader from those of another.

Despite apparent registrability under the Trade Marks Act, trade marks consisting of a single colour have proven to be very difficult to register, primarily due to their inherent low level of distinctiveness.

To be registrable as a trade mark, colours must be capable of distinguishing one trader's goods or services from another's. It is not enough that consumers simply “associate” the colour with a product. The colour itself must also be perceived, in and of itself, as indicating the origin of the goods.

On 26 November 2003, the Assistant Commissioner for Trade Marks rejected an application by Effem Foods Limited to register the colour orange (described as Pantone 021C) for rice and rice snacks on the basis that the use of the colour orange by Effem Foods Limited was not sufficiently distinctive to be inherently capable of distinguishing its Uncle Ben's rice from that of other traders.

Colours can only be inherently capable of distinguishing one trader's goods or services (and therefore registrable) if the colours are not colours which other traders would ordinarily and legitimately want to use for their own goods or services.

A key factor in the decision against Effem Foods Limited was that other traders, without improper motive, may wish to use the colour orange for similar rice products, and in fact already were.

This is not to say that colours and colour combinations which other traders might ordinarily wish to use cannot ever acquire distinctiveness, and therefore become registrable. Where consumers have come to regard the colour or colour combination as indicating a particular trader's goods and services as a result of use, that colour or colour combination will be registrable.

The following marketing/legal strategies have proven useful in establishing that consumers recognise a given colour as indicating the source of goods or services:

• Colour saturation advertising – brand recognition may be improved by creating a consistent colour/brand identity by saturating everything associated with a particular product or service (including packaging, brochures, advertising and websites) with a colour.
  
  
• Look-for advertising – use of advertising which sends the verbal message “when you see X colour, think of Y trader”. This may assist with reinforcing the idea that the colour is performing the function of a trade mark, i.e. to indicate a particular trader's goods or services, and should promote rapid consumer recognition of the colour as a trade mark.

Enquiries and information

For more information on the registration of a colour as a trade mark, please email or call Tania Laird on 64 9 916 8766.