Melbourne-based Hannah Poppins (owner of Miss Poppins & Me) recently ran into a trade mark issue after she used a particular term to describe her products online.
Poppins makes paper flowers for weddings and for use in advertising and promotions including window displays for retailers Seafolly, Katie’s & Target. She sources her paper from overseas and sells some of her paper creations on e-commerce website Etsy.
She was recently contacted by global brand Tiffany & Co warning her that she was infringing their trade mark after she listed some of her products with the description “Tiffany blue”. As a result, Etsy deactivated Poppins’ listing.
“I didn’t realise it was trademarked, I hadn’t researched that enough,” Poppins says. “I thought it would be OK, as I was not selling a Tiffany box or anything claiming to be Tiffany property. I was just trying to refer to the colour, as people recognise that colour a lot and I thought that was the typical term people would search for.”
Tiffany & Co trade marked the colour back in 1998. The jeweler has not objected to Poppins’ use of the colour, just the phrase “Tiffany blue”, and so Poppins has applied for the flowers to be relisted on Etsy with the colour described as “blue turquoise”.
As a general rule, it is safest not to use or refer to any trade marked terms when listing or marketing your goods or services, online or otherwise, even if you are using terms that appear to have no direct relevance to your goods or services.
In relation to design, it is also wise to avoid using colours that could lead to confusion with another brand. Before investing time and money into a logo or product design, do your research and choose your wording carefully.
Just as Tiffany & Co have done with Tiffany Blue, a specific shade of colour, or combination of colours, can be registered as a trade mark. However, colour marks are relatively rare. This is because significant evidence of use is usually required for a colour mark to be accepted (particularly for single colours). A fairly extensive amount of evidence of use is required to show that the colour mark is capable of becoming, or indeed as already become, distinctive.
Famous examples of colour marks
‣ Cadbury successfully trade marked Pantone 2685C in Australia, only for chocolate products. Their particular shade of purple has been subject to a legal conflict with Nestle UK that has continued for over a decade.
‣ Christian Louboutin’s red-soled shoes are instantly recognisable, however, they have walked into legal battles across the globe, including with fashion labels Yves Saint Laurent, Zara and Dutch footwear brand Van Haren.
‣ 3M colour marked the original Post-It colour, Canary Yellow, for use in office and stationery products. The hue was chosen because it was the only colour of scrap paper on hand when the company started experimenting with the sticky notes.
If you’re thinking about trade marking a colour, please contact one of our trade mark attorneys to discuss your options.