The question wether a colour can be trademarked remains one of the most relevant questions in intellectual property law in the realm of fashion and beauty. One recent example is the “it” beauty brand Glossier, which applied in early 2020 for not one, but two colour related trademarks. On the one hand the millenial pink shade many know the buzzy firm for. On the other they filed for a bubble-wrapped bag called “Pink Pouch”. Due to the specific problems posed by colours in trademark law, Glossier has met some opposition from the USPTO.
Is it really possible to trademark a whole colour?
Glossier is not the first company trying to trademark a colour. For many in the industry, the IP battle between Louboutin and YSL comes to mind. It’s no wonder, that quite some cases in this field have emerged. Trademark law is very open in principle as to what can be trademarked.
According to the EU Trademark Directive and Regulation, a trade mark may consist of any sign. Everything recognizable by the senses qualifies as such a sign. Art. 4 EUTMR even enumerates some examples; words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds. It’s the same in the US by the way.
In principle, any such sign can qualify for registration. The more important questions are, wether
– that sign is of use to differentiate between goods and products so that consumers can identify the proprietors behind them and
– wether the trade mark register can represent the sign.
After that follow the so called “absolute grounds for refusal” which come in play on a later stage. And this is where the fun begins.
The ECJ rules
Firstly, according to the ECJ in “Sieckmann”, a trademark must be clear, precise, self-contained, easily accessible, intelligible, durable and objective to be displayed in the register. This means that the applied for registratration must specifiy the colour according to an internationally used colour classification system (e.g. PANTONE). A simple display (like a printout) of the colour does not suffice since printers or screens may misrepresent the exact shade.
The concrete distinctive character every mark must have poses another problem. The mark must be able to sufficiently distinguish the goods and/or services of it’s owner from those of the competition. This relates to the applied for classes of goods and services – so for the beauty unicorn in the realm of make-up and packaging.
However, the ECJ ruled in “Libertel” that most consumers see colours as mere decoration. The USPTO raised this point as well. Furthermore, the finite number of colours poses a problem, since monopolising colours hinders free trade and competition.
And what about combinations of colours?
According to the ECJ case “Heidelberger Bauchemie” combinations of colours may qualify as long as the proprietor specifies the exact shades and ratios of alignment.
Specifically placed colours?
Glossier has responded to the these problems by opting to refine the language of it’s trademark to only covering the color pink on the inside surface of a box. As such, Glosser’s strategy mirrors the language that Christian Louboutin adopted in light of the outcome of the case that it filed against Yves Saint Laurent in April 2011.
Specifically placed colours are much easier to trademark because they acquire secondary meaning much easier and the risk of “overblocking” colours is much lower.
Parallels to Louboutin and Tiffany’s
Glossier’s counsel backed his argument with Christian Louboutin’s and Tiffany’s trademark rights in colour.
“Similarly here,” the brand “seeks protection for a narrowly defined display of the color pink that is capable of acquiring distinctiveness just as Louboutin’s red sole was.” And more than that, the brand’s counsel says that Glossier’s particular “use of the color pink is analogous to Tiffany’s use of robin’s egg blue, in which Tiffany has secured multiple trademark registrations as applied to its product packaging.”
Glossier should note though, that Tiffany’s has been using it’s specific shade for quite a bit longer – namely since the late 19th century. Furthermore, both companies have access to a marketing budget dwarving that of Glossier’s, meaning much bigger reach and brand awareness. On the other hand, Glossier has achieved a huge social media buzz. Consequently they may have the advantage of the age of Instagram.
So, what will happen to Glossier?
As a result of a pending “Pinkbox” mark, Glossier’s application is on hold. The USPTO will wait to see whether Pinkbox’ owner has used the trademark in the last few years and says that it “will periodically check [Glossier’s] application to determine if it should remain suspended.”
Image: Image: Markus Spiske on Unsplash