Recent Practice Amendment Notices published by the UK Trade Marks Registry shed light on how to register a colour as a trade mark and other points to watch when contemplating applying for the ultimate protection a brand can have.
Topic: Intellectual property
Who: The UK Patent Office
Where: London
When: April 2006
What happened:
The Trade Marks Registry has issued its latest Practice Amendment Notices clarifying how it will deal with certain issues when assessing applications to register trade marks. Particular points of interest for trade mark applicants include:
Colour Marks
When a brand owner applies to register a colour as a trade mark they need to make sure that the description of the colour is presented in a "clear, precise, self-contained, easily accessible, durable and objective way" (Libertel).
- For single colours, a written description, with the relevant code from an internationally recognised colour identification system (like Pantone®) will be enough.
- Descriptions of the colour which are impossible to interpret without costly specialist equipment or services won't be accepted – so, Ty Nant Spring Water Limited's application for the cobalt blue colour of their bottle was rejected because the description would have required a spectrophotometer to decide whether a particular colour was covered by their description or not.
- Applications for combinations of colours in the abstract (rather than in relation to certain goods), should include a description of how the colours are arranged and associated in relation to each other – for example: " the distribution and ratio of colours to each other is 50-50, whereby the colour blue runs horizontally above the colour red, forming a striped whole" was found to be an acceptable description.
Unregistrable marks
Certain trade marks can't be registered, either because they are contrary to public policy or accepted principles of morality, or because they are specially protected (certain Royal ensignia etc). On this basis the Registry has published:
- some new examples of objectionable marks which include: JESUS (on the grounds this undermines accepted religious values); WHITE DOVE (against public policy, being the nickname for a drug); and FOOK (being phonetically identical and visually similar to a taboo word).
- an updated list of those Royal Family members whose names can't be registered in, or as, trade marks, without the consent of the Queen or the relevant individual.
Distinctiveness
A mark which is not distinctive, or which is descriptive, can't be registered as a trade mark, unless the owner can show it has acquired distinctiveness through the use that has been made of it by the date of the application. Essentially, this requirement will be satisfied if a "significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark" (Windsufing Chiemsee).
Nestle SA v Marks UK Ltd (the KIT KAT/HAVE A BREAK case) established that a mark can acquire distinctive character as a result of its use as part of, or with, another mark; it doesn't have to have been used on it's own in order to be registerable. The Registry has suggested factors which might be accepted as evidence that the brand owner has done enough to educate the public that the secondary mark has acquired a trade mark significance of its own. These include:
- presenting it as the brand name for the product – so it's bigger or more prominent than the "house" mark (although if the secondary mark is very descriptive, this in itself wouldn't turn it into a registerable trade mark);
- where the secondary mark is a colour or the appearance of packaging, using it in advertising statements ("look for the one in the blue wrapper"), or using that colour or packaging feature consistently across a range of the same kinds of products, as a kind of house livery; and/or
- supplying evidence that the public has come to rely on the mark to distinguish between goods or services when selecting between competing products.
However, using the letters "tm" in relation to the mark would not be conclusive.
Why this matters:
Applications which don't meet these requirements will face objections on legal and procedural grounds. In some cases, applicants may have a time period in which to amend their application, but changes which substantially affect the identity of the mark can't be made, and the application could therefore fail, wasting time and costs.
It's therefore worth taking the time up front to get the details of a trade mark application right before filing.
