Recently, there has been an increase in the number of companies wishing to register color as a trademark. While this practice has been known abroad for a long time, in Russia it arose recently. The basis for registration of a color trademark is Article 1482, Part 4 of the Civil Code of the Russian Federation, which states that a trademark can be registered in any color or color combination in accordance with the rules approved by Rospatent. In this case, the color trademark can be either monochromatic or combine several shades.
However, the desire of companies to register color as a trademark has given rise to discussions and disputes among designers, lawyers and patent attorneys, since the very possibility of their registration is highly controversial and requires convincing evidence of the acquisition of distinctiveness. Such applications take a very long time to be considered, as they require detailed study. For example, the color trademark of Sberbank took 3 years and 8 months to register, and Gazprom – 3 years and 3 months.
Nevertheless, companies strive to register color as a mark, since color and successful combinations of its shades have a powerful impact on the psychophysiological state of a person, in particular on his emotional sphere, and also contribute to the formation of stable associative connections with a certain product or the company that produces it, which can play an important role in strengthening its position in the market and increasing competitiveness.
It should be noted that when applying for registration of a color as a trademark, it is necessary to take into account its functional purpose, for example, red and yellow act as a warning signal about danger on the road, and can also be used on signaling elements of workwear for employees of the road sector, construction, aviation, to indicate dangerous areas or the presence of hazardous materials. Green typically represents safe areas, environmentally friendly products, and blue is associated with the police or other authoritative services. It is not recommended to record the natural color of the material from which the product is made.
It should be noted that the new Rospatent Rules regarding the registration and filing of applications for color trademarks indicate that they can be registered only by confirming the existence of formed stable associative ties between the consumer and a specific manufacturer who has been using such a mark for a long time in its commercial activities (that is, it is necessary to prove the acquisition of distinctiveness by the designation).
In practice, we often encounter a situation where several companies use the same color as trademarks, which can cause a conflict of interest, which raises the question: can it be prevented?
For example, green color is used not only by Sberbank, but also by other companies in the field of banking services:
- Sberbank – St. No. 556088
- BANK AGROIMPULS – St. No. 342856
- Investbank – St. 386413
Trademarks in red are also used by many companies: St. No. 963889 Copyright holder: Amayama Auto LLC: No. 344252
(drom assist ), ( №619457).
The copyright holder of the blue trademark is RN HOLDING JSC - St. No. 334198, St. No. 273266.
As you can see from the above examples, the color is the same, but companies use different shades of it. That is, registration became possible due to the indication of their numbers according to the Pantone system. This system was developed by the American company Pantone Inc in the mid-20th century and consists of color catalogs, each of which is assigned a serial number and color formula, which are indicated in trademark applications.
Proving the distinctiveness of a color trademark is very difficult, and if the buyer cannot identify the product and the company that produces it by color, then such a mark cannot be registered.
In order for stable associative connections to be formed, it is necessary to carry out large-scale advertising work, requiring financial investments and a huge investment of time and effort.
For example, to prove the distinctiveness of its color trademark, Sberbank provided evidence of the use of shades of green in staff uniforms and for the design of the official website, offices and ATMs of Sberbank, as well as their use in advertising campaigns, as a result of which Sberbank clients formed stable visual associative connections with the bank. The evidence presented helped convince the experts, despite the fact that the green color was also used by other banking organizations.
An interesting case is the litigation between two famous French fashion houses Christian Louboutin and Yves Saint Laurent over a brand (shoes with red soles) created by Christian Louboutin, but copied by Yves Saint Laurent.
Their legal dispute resulted in a court ruling that other manufacturers would be able to use red soles as long as the color of the shoes was red.
In Russia, registration of the red trademark was initially rejected, since the color of shoes is not the object of exclusive right, but later the color mark was registered, since the owner’s arguments were accepted that the exclusive right applies only to the sole, and not to all shoes. The international registration of the mark was carried out by the International Bureau of WIPO on 02/03/2010 under No. 1031242 for goods of class 25 of the ICLG specified in the registration list, in the name of Christian LOUBOUTIN, France (hereinafter referred to as the copyright holder).
Yet the increasing popularity of color trademarks is met with resistance from scientists who question whether a color can acquire sufficient distinctiveness for a trademark to serve its purpose, since using the Pantone system to register a designation in a specific shade does not solve this problem, since the consumer cannot determine the exact shade of the color and relies only on his memory. The second major argument was that registering a color as a trademark would allow companies to monopolize the aesthetic and communicative characteristics of a color.
Therefore, the production by a subject of homogeneous goods of the same color, but of a different shade, will still be a violation, since there is a possibility of confusion (Clause 3 of Article 1484 of the Civil Code of the Russian Federation). In addition, in paragraph 162 of the Resolution of the Plenum of the Armed Forces of the Russian Federation dated April 23, 2019 No. 1015 clarifies that “to establish the fact of infringement, danger is sufficient, and not the actual confusion of the trademark and the disputed designation by ordinary consumers of the relevant goods.”
In other words, the issue of violation is decided not by comparing shades according to the Pantone system, but taking into account the general requirements for the prohibition of confusing similarity. This creates risks of abuse of rights and restrictions on competition.
Also, difficulties in providing evidence are possible due to the lack of uniform requirements and a unified methodology for conducting sociological surveys conducted to prove the distinctiveness of trademarks. For this reason, Rospatent and the Intellectual Rights Court are critical of the objectivity of the results of sociological surveys presented by applicants.
However, the practice of Rospatent and judicial practice show that in Russia the registration of color trademarks is possible if there is substantial evidence confirming the long-term and intensive use of color to individualize the relevant goods or services.
Thus, registration of a color as a trademark is possible if it performs an individualizing function, without connection with other elements, and is a distinctive, trademark of the company (for example, a consumer can immediately identify the company or product or service he needs by color).
In the absence of a long history, the Applicant can prove the presence of the distinctive ability of a color mark by providing information about the intensity of use of color as a means of individualization, advertising costs, territory of use, volumes of product sales, number of consumers, etc.
Gathering evidence about the distinctiveness of a color trademark is very complex and requires some experience and relevant knowledge. Therefore, it is more advisable to entrust this work to specialists in the field of intellectual property.
