Trademark Definition
Pursuant to the provisions of the Serbian Law on Trademarks of the Republic, a trademark is defined as a right that protects mark used in the channels of commerce for distinguishing goods and/or services of one natural or legal person from the same or similar goods and/or services of another natural or legal person. As such, a trademark constitutes an exclusive right that allows its holder to prevent third parties from using an identical or similar mark for identical or similar goodsor services in commerce.
However, in practical terms, a trademark is more than just a right regulated by law. It has the ability to link goods or services to a specific source (manufacturer/service provider) and to influence consumer decisions.
Can a Mark Consisting Solely of One or a Combination of Colors Be Protected by a Trademark?
According to the Law on Trademarks, a mark protected by a trademark may consist of any signs, in particular words, including personal names or of drawings, letters, numerals, colors, three dimensional shapes, the shape of goods or of the packaging of goods, combination of those signs or sounds, under the following conditions:
Therefore, based on this definition, it may be concluded that a mark consisting of a single color or a combination of colors may also be subject to trademark protection, under the same conditions as any other mark—namely, it have to be capable to distinguish goods and/or services in the channel of commerce, a concept known in professional circles as distinctiveness, and suitable for reproduction.
Quite simple, isn’t it? But is it really that straightforward in practice?
Practical Examples
In practice, a color per se, without any other distinctive elements, is rarely capable of distinguishing goods or services. Moreover, a general rule is that a single color cannot be protected as a trademark, since it lacks distinctiveness and market participants do not perceive color alone as a distinctive mark.
However, like any rule, this one is subject to exceptions.
A prerequisite for a color or combination of colors to enjoy trademark protection is that it possesses strength to identify the goods or services in the relevant trade.
What does that mean in practice?
In each individual case, the applicant have to prove that the mark consisting solely of one color or a combination of colors — without any additional distinctive elements — is perceived by the relevant public as a distinctive mark, namely that the relevant consumer, based solely on the color or combination of colors, is able to distinguish the goods or services and to identify their commercial origin.
The distinctiveness of a color or color combination may be inherent, although such cases are rare; more commonly, distinctiveness is acquired through long-term and consistent use in the market.
Therefore, we are providing several examples of positive practice:
A specific shade of purple has been registered as a color trademark used for Milka chocolates. However, even this trademark has not achieved successful registration in all jurisdictions where it was applied for.
“Tiffany Blue”, owned by Tiffany and Company, has been registered in jurisdictions such as the United Kingdom, Monaco, and Australia.
The shade depicted above has been registered in the Benelux countries as a trademark of T-Mobile Netherlands B.V.
Magenta is a reputed trademark of Deutsche Telekom AG. The application had been filed in the 1990s and the mark was registered by the EUIPO, with validity in all Member States of the European Union.
Unfortunately, domestic rights holders have had less success. For example, Soko Štark once attempted to register the yellow color characteristic of the "Najlepše želje" chocolate before the Serbian Intellectual Property Office, but without positive outcome.
Rather than a Conclusion
The protection of a color or combination of colors as a trademark constitutes an exception rather than the rule, which renders it particularly specific.
The fundamental requirement for a color to become the subject of legal protection as a trademark is that consumers are able to establish the link between the color and a specific goods or services. The most common means of achieving this is through its long-term, consistent, and intensive use in business.
Essentially, the possibility of protection depends on the strength of the color—whether inherent or acquired by use—and on whether that strength is sufficient to confer upon the color the status of a distinctive mark.
Bojana Veselinović
Senior Associate
bojana.veselinovic@prlegal.rs; legal@prlegal.rs;