A trademark (hereinafter referred to as TM) is an object of copyright and intellectual property, a trademark and logo, a sign for goods and services registered in accordance with the procedure established by law. Simply put, it is a registered designation that distinguishes your product from others. A trademark must be unique and not be confusingly similar to other trademarks. There are three main types of trademarks: verbal, pictorial and combined, which, in turn, are divided into black and white and color.
A color can be registered as a trademark if it has a distinctive characteristic and is associated with certain goods or services. However, the process of registering a color as a trademark is complex and requires evidence that the color has become a recognizable symbol of a company or brand. It is important that the color does not restrict competitors from using the same shades for their products if it is not unique and inextricably linked to the brand.
Practice in Ukrainian law
The legal dispute over the “pink color”, which lasted since 2021, ended in the Supreme Court with a victory for the IP office. This case No. 910/13105/21 became the second court case on “monochrome” trademarks.
Thus, in May 2018, the Hungarian airline VIZZ Eir Hungeri Zrt. applied to the then Ukrpatent with application No. m201810403 dated 02.05.2018 for registration of a trademark in the form of pink:
(pink: pantone 233; c12 m100 u0 k0; r198 g0 b126; hex #c6007e; ral 4010).
The application was refused legal protection on the grounds that the color had not acquired distinctiveness in relation to the applicant and therefore could not become a trademark. Disagreeing with this refusal, the air carrier appealed to the court.
Thus, the air carrier believed that the mark had acquired distinctiveness over the years of continuous operation of VIZZ Air in the Ukrainian market and the use of the pink color in advertising campaigns and in the provision of services. He also pointed out that the mark is easily recognizable by Ukrainians and has a distinctive character.
The defendant (now the IP office) believed that the materials provided by the plaintiff did not prove that the pink color, as such, acquired distinctiveness in relation to the air carrier when providing services of class 39 of the Nice Classification (air passenger transportation; airline transportation services) and is perceived by consumers only in a combination of colors and sometimes with the Wizz mark.
The court of first instance, by its decision of 01.06.2022, satisfied the claim in full. However, the Court of Appeal, by its decision of 30.05.2024, overturned the decision of the court of first instance and issued a new decision dismissing the claim.
Subsequently, the case was transferred to the Supreme Court, which, having considered the company’s cassation appeal, noted that the court of appeal had examined and evaluated the evidence provided by the parties to the case, as well as the expert opinions, according to its internal conviction based on a comprehensive, complete, objective and direct examination of them, with an assessment of all the arguments of the parties to the case.
The Supreme Court noted that when a color is applied for registration of a mark, a prerequisite for the appropriate registration of the TM is to clarify the question – “Has the designation in the form of color acquired distinctiveness when applied to the declared goods or services?”.
At the same time, the determining criterion for evaluation is the test for the fulfillment by the claimed color of the main function of the mark, namely, whether the color applied for registration as a mark allows the consumer to distinguish among other goods or services of one manufacturer from the goods or services of another manufacturer without any likelihood of confusion. As noted, consumers must unambiguously perceive such a color (without additional graphic and verbal elements) as a mark for specific goods or services, and therefore, to register a color as a mark, convincing evidence of the acquired distinctiveness of the color for the declared goods or services is required.
The Supreme Court also emphasized that the distinctiveness acquired through use is allowed only under exceptional circumstances, in particular when the number of claimed goods and services is very limited and the relevant market is very specific. In other words, registration of color as a trademark is possible for a very narrow range of clearly defined goods or services.
Pursuant to Article 5 of the Law of Ukraine “On Protection of Rights to Trademarks for Goods and Services”, a trademark may be the subject matter of any designation or any combination of designations. Such designations may include, in particular, colors and color combinations. As a rule, colors have a decorative, aesthetic or finishing function, so they have a weak ability to distinguish goods/services and determine the source of their commercial origin.
Since the number of colors that consumers distinguish is relatively small, registration of color marks for certain goods/services may lead to exhaustion of the entire range of available colors and unreasonable restriction of the use of their shades. That is why the registration of a color as a trademark has special conditions for granting legal protection and is limited in the public interest.
At the same time, a color may acquire distinctiveness and become eligible for legal protection, but under special circumstances and subject to prior use of the mark for the claimed goods/services in a particular market. Such special circumstances require the applicant to prove with appropriate evidence that the color has acquired distinctiveness as a result of use, as well as its non-traditional nature in a particular market for the claimed goods/services.
color / copyright / intellectual property / trademark / WIZZAIR
