The Intellectual Property Office of New Zealand (IPONZ) has issued an update to colour requirements for colour trade mark applications in New Zealand. Before you begin conducting an entire IP audit, be advised: a colour trade mark is not the same as a trade mark in colour.
To illustrate this, ask yourself whether a specific source comes to mind if the colour provided below were applied to the goods of “Industrial oils and greases; transmission oils; lubricants; products for absorbing, spraying and binding dust; fuels (including petrol) and lighting substances”.
Many consumers would quickly associate the colour above with BP fuel stations. BP p.l.c. has registered a couple colour trade marks in New Zealand including the above (New Zealand trade mark registration no. 211576) for various goods and services.
Section 42(1)(b) of the Trade Mark Regulations 2003 (NZ) states “The application must contain the following information when it is filed: … (b) a clear representation of the trade mark …”. Firstly, the use of ‘must’ and ‘when it is filed’ means that if the colour is not included in the initial filing it is very likely that it may not be rectifiable during the prosecution of the application. If the requirements for filing are not met, the application will not be allocated an application number nor a filing date.
While a clear representation of the mark must be provided at the time of filing, an acceptable description of the colour(s) must be provided to the Commissioner of the colour(s) prior to acceptance of the application. The description should also include how the colour(s) are used or intended to be used. The exact form this takes may vary on a case-by-case basis. The aforementioned BP p.l.c. trade mark registration includes the following explanation:
“The mark consists of the colour green, applied to the exterior surfaces of service stations used for the supply of the said goods as depicted in the representation attached to the application form …”
In other cases, such as Cadbury UK Limited’s iconic purple (New Zealand trade mark registration nos. 285611 and 285612), the following description is provided:
“The mark consists of the colour purple (Pantone 2685C), as shown in the representation attached to the application, as applied predominantly to the packaging of the goods.”
In the case of Cadbury Limited UK, the identification of their colour mark went beyond “purple” and was more specific to identify the exact purple using the PANTONE® colour system. The PANTONE® colour system is widely known and readily available for access by the Commissioner of Patents, Trade Marks, Designs and Plant Variety Rights in New Zealand for providing a description of your goods/services.
Notwithstanding the need to provide a clear representation of your trade mark at filing, there remains still the question of distinctiveness, an absolute ground for not registering a mark. Generally speaking, in the absence of substantial use, a mark of a single colour will have no distinctive character. Marks which comprise two or more colours will have insufficient inherent distinctiveness and will require some level of evidence of use before it may be accepted and registered. Some colours are widely used in certain industries and as such are unlikely to be registrable even with evidence of use. However, there is no prescription for what can or cannot be registered and each application must be considered on a case-by-case basis on its own merits.
There are many pitfalls which may be fatal to a trade mark application, particularly unconventional marks such as colour trade marks. If you are looking to protect a colour trade mark, contact a Trade Marks Attorney at Michael Buck IP for advice, preparation, and filing of your trade mark application.