40 Shades of Green – Can a Colour be Trade Marked?

With this being the middle of March, there’s a tsunami of shamrocks, Guinness, pots of gold and green beer coming down the tracks on social and traditional (overseas) media in the coming days. One or two will refer to the Emerald Isle and that apparently there is 40 shades of green to be found here.

Can any of these 40 shades identify your brand? Can you develop a 41st shade and register it as a trade mark? Is it even possible to claim ownership of a particular colour? Yes it is – but only exceptional circumstances with extensive evidence will a colour will be permitted registration and it will depend on the colour and how it is used.

Instances where the colour, and the colour alone are the registered trade mark are actually quite rare, but there are examples:

Orange, the French telecoms company, have successfully registered a combination of orange (PANTONE 151C), black (PANTONE BLACK C) for use in mobile banking and certain retail and communication software purposes.

Cadbury after a very twisting and storied legal skirmish with Nestlé, were able to register a particular shade of purple (Pantone 2685C to be exact) strictly for use in “Milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate.”

Closer to home, Flahavan’s have been able to register a particular shade of red, pantone 186C, as an Irish trade mark on the grounds that it has achieved distinctiveness through use in Ireland over the years for use in the packaging of porridge oats, oatmeal, processed oats, prepared oats.

Some points to consider when gathering evidence that your colour has acquired distinctiveness and should be registered as a trade mark:

· the market share held by the mark;

· how intensive, geographically widespread and long-standing use of the mark has been;

· the amount invested by you in promoting the mark;

· the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and

· statements from chambers of commerce and industry or other trade and professional associations that the particular colour, in isolation with no other branding attached, can act as identifying your undertaking from that of others on the market.

If you have any questions in relation to your brand at any stage of your product’s life cycle, contact us at info@briffa.com.

Beannachtaí na Féile Pádraig

Written by Mark Eiffe – Solicitor