Non-conventional trade marks have been widely debated over the past few years. The registration of colours as trade marks constitutes a good example of the reluctance to accept trade marks that are different from the signs with which we are more familiarized. The Portuguese Industrial Property Code for instance determines that colours cannot be registered as trade marks except if combined with other colours or with graphics, slogans or other elements in a peculiar and distinctive way. The registration of a colour per se is therefore expressly excluded.
By this provision, the Portuguese legislation is along the same lines of some of the Portuguese speaking countries such as Angola, Cape Verde and Mozambique and also with the special administrative region of Macao. However, such provision does not go along with the legislation on Community trade marks and the trend set by the European Court of Justice with the judgment of May 6 2003 in Case C-111/01 (Libertel) and the subsequent decision of June 24 2004 in Case C-49/02.
Indeed, the Directive 89/104 of December 21 1988 states that a trade mark may consist of any sign capable of being represented graphically but that a sign cannot be registered as a trade mark if it is devoid of any distinctive character.
In the Libertel case the ECJ held that a colour may have a distinctive character provided that it can be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective. A color per se can therefore be registered as a Community trade mark, but the ECJ demands that a colour or a combination of colours must pass a very rigorous and thorough examination procedure in order to be granted.
The Portuguese Trade Mark Office and courts have met few cases on colours as trade marks and this may also be explained by a law that does not only exclude the registration of colours per se but imposes additional requirements for the registration of colours as trade marks.
The reason underlying this approach seems to be that a colour by itself cannot distinguish the products or services of one undertaking from those of its competitors. However, from the perspective of a trade mark registration it is not clear the differences existing between a single colour and a letter or a number. The inherent distinctive character of a letter or a number seems to be the same as that of a colour or a combination of colours. Moreover, it can even be said that colours may produce on the consumer a more enduring impression than a number or a letter.
A colour as a trade mark can also be more easily understood by consumers, for instance in areas of low literacy where the consumer has more difficulties in perceiving that a word trade mark is associated with a certain company.
The so-called colour depletion theory does not seem to be a valid argument to sustain the non-acceptance of colour trademarks since the idea of a trade mark is precisely to create a right of exclusivity for its owner and to deprive the competitor to use the same or similar signs someone has thought of for the same products or services. For instance, there are well-known trade marks that include the designation of a colour as its main element and its owners rightfully act against who wishes to register a trade mark including a reference to that colour. It must also be said that it has been widely accepted that the colour trade mark must be registered for a specific type of colour and therefore the owner of a colour trade mark will have an exclusive right only for that specific tone.
It must finally be mentioned that most legal systems in Europe, including Portugal, only require a very low degree of distinctive character for a trade mark and this should also be taken into account when examining an application for a colour trade mark.
Thus, it seems that the difficulties with accepting colour trade marks do not reside so much in the inherent capability of these signs to differentiate goods and services but mostly in practical aspects. For instance, the way to determine the distinctive character of a colour trade mark or to determine whether a colour trade mark was imitated cannot be the same as for conventional trade marks. Even the possibility of conducting a trade mark search for prior rights is a question that apparently is still not solved in the Portuguese system.
Another issue is the possibility of a colour trade mark becoming a well-known trade mark. The Portuguese Industrial Property Code determines that the application for registration of a trade mark shall be refused, though intended for products or services without an identity or alikeness, if it is the same or similar to a prior trade mark enjoying of reputation in Portugal or within the European Union. The possibility of applying this special regime is even more curious for colour trade marks since these are usually accepted only for very specific products or services.
Maybe in a few years questions like these will be raised and have to be decided by the Portuguese Trade Mark Office and courts. For now, it seems that the issue of the registration of colours as trade marks in our country will have to wait for a legislative initiative and for a stronger interest by the companies playing an active role in the national market.
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| Ricardo Veiga |
Raul César Ferreira (Herd) Lda
Rua do Patrocínio, 94
1399-019 Lisbon
Portugal
Tel: +351 213907373
Fax: +351 213978754
mail@raulcesarferreira.pt
www.raulcesarferreira.pt
