For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Monday, 19 March 2007

Mobile phone wars; Aussie colour mark

Nokia v Qualcomm

PR Newswire reports on a new twist in the Qualcomm/Nokia patent dispute. Nokia has filed suit in Germany and the Netherlands seeking a declaration that the patent rights concerning chipsets placed on the EU market under Qualcomm’s licence are exhausted. The chipsets are said to have been provided by Qualcomm to Texas Instruments.

The IPKat awaits the outcome with interest. Exhaustion of trade marks has attracted a lot of attention recently. It will be good to see the courts get their teeth into patent exhaustion too.


Are the Aussies green?

The IPKat thanks Lee Curtis (Pinsent Masons) for pointing out that BP is appealing to the Australian High Court against the Federal Court’s decision last year to refuse to order the registration of Pantone 348C – a green shade. Colours are in principle registration in Australia if they are distinctive and a number of companies have succeeded in obtaining colour registrations. BP’s lawyer, Darren Saltzman, noted:

"This is not removing the colour green from the marketplace as a trademark. It is a particular shade of green, applied in a particular way, in relation to particular goods and services. If you wanted to colour your chocolate shop green, I don't think it would concern BP".
The IPKat says that Mr Saltzman’s comments lifts the lid off a can of worms that has been bothering him for some time. It’s all very well to get your colour trade mark, but how much protection to you get once you have it? For example, do you get protection against similar shades? If you do, this threatens a colour monopoly. If you don’t then can consumers with imperfect recollection really store a precise image of your shade in their minds? Likewise, it’s all very well Mr Saltzman saying that he doesn’t ‘think’ BP will be bothered by use on dissimilar products, but what about dilution protection? Can precise shades of colours ever become famous enough to qualify? The colours have shown a tendency to give greater dilution protection to distinctive marks – can colours ever become distinctive enough? Moreover, how does one harm a colour’s distinctiveness? By using a similar shade? If so then we’d be enjoining use of a range of shades of a colour over similar and dissimilar goods. Smells like a monopoly to the IPKat.

5 comments:

Anonymous said...

If you manage to get a colour registered then chances are it will be registered on use only. The rights, in my view, will be very narrowly defined in terms of encompassing other shades.

BP Amoco PLc v John Kelly Ltd [2002] FSR 5 is one of the few cases to my knowledge (are there any others out there?) where a colour registration has been enforced.

Gerontius said...

For me, the problem with BP registering green is that it is not a colour that I associate with them. Rather, it's the colour combination of green and yellow that I think signifies the company. (eg http://www.bismarckairbp.com/)

Question is, would there be a way to protect that colour combination in a non-specific way rather than merely in a particular design such as that attractive flower arrangement?

Anonymous said...

Dear Gerontius,

There is no problem in principle with registering colours in combination, and indeed "in the abstract". Such colours would have to be graphically represented properly, and the scope of the rights would have to be legally certain. The ECJ Heidelberger case is lead authority at the moment.

Craig said...

Funnily enough, and being simplistic, the full Federal Court of Australia agreed with Gerontius. The evidence BP had of its use of the colour green was always in combination with yellow. Plus, BP's attempts to amend the representation of its trade mark were not permitted by the Court. Representation of colour marks in Australia is yet to be determined, so I suspect the High Court will take this one on - at least, I hope so, to give some guidance to the humble practitioners out there!

Gerontius said...

Thanks for educating an ill-informed patent attorney, guys! At least it proves I haven't forgotten everything I learned at Queen Mary...

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