In the US a colour can only be successfully trademarked (protected) if the colour is used as a brand identifier. If the colour is used in a functional way then the courts do not usually award protection since to do so would be to unfairly suppress competition. Catrin Turner, an expert in trade mark law at law firm Pinsent Masons has said:
“Colour of packaging, for example from yellow or silver for butter, to purple or red for chocolate, create powerful connections for consumers. Having the colour monopoly granted by a registered trade mark creates real practical barriers for competitors wanting to sit within a class of products which consumers expect to be coloured a particular way.”
In my colour branding lectures at the University of Leeds I illustrate this with several high-profile examples such as Cadbury purple.
In 2008 the Federal Courts in USA dismissed a claim by Cadbury Schweppes that a competitor, Darrell Lea, had used purple on their chocolate packaging to pass their products off as Cadbury chocolate. One of the issues here is that purple is used functionally on chocolate packaging since it conveys richness and opulence. Indeed, Darrell Lea have been using the colour purple with their chocolate products since 1927. It is an obvious choice. It was a costly loss for cadbury; five years in court and undoubtedly millions of dollars in legal costs. However, the law in these matters is complex and varies from country to country. In November 2011 a UK court allowed Cadbury protection for their purple (Pantone 2685C) despite protests from Nestlé. In the UK a colour can be trade marked only if the company can show that the colour has acquired distinctive character through use. Interestingly, Cadbury were only granted protection for certain products (chocolate bars, for example) rather than being granted exclusive use of the colour for all of their products.
I was interested to read another fascinating case this week – Christian Louboutin’s red, used as a brand identifier on the soles of its women’s shoes. Louboutin registered its shade of red with the US Patent and Trademark Office in 2008, and is now trying to prevent competitor Yves Saint Laurent from selling scarlet-soled shoes of its own. The fashion house says YSL’s copycat soles threaten to mislead the public. The district judge in the case ruled to deny Louboutin’s request for a preliminary injunction that would prevent YSL from selling the red-soled shoes from its 2011 collection, saying:
Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.
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