WHEN A SINGLE COLOUR IS THE PRIOR MARK

The IPKat brings news of an interesting Trade Mark Registry decision concerning an opposition based on a registration of a colour per se. Orange Personal Communications is the proprietor of two marks for the colour orange in the form of Pantone 151 and a colour sample, applied to the visible surface of packaging or promotional materials etc, where it is the predominant colour. It opposed Easygroup’s application to register various terms prefaced with the word “easy”, such as easyPoints, easyJet.com and easyGiro, all with the colour orange claimed as an element of the mark. However, during the course of the opposition the opponent sought to amend the application in order to include a claim under s.5(1) of the Trade Marks Act (identical marks, identical goods/services). The Hearing Officer held (mirroring the Civil Procedure Rules on amendment) that such an amendment could only be made if it had some prospect of success and here the opponent had no possibility of success.

The ECJ in LTJ Diffusion v Sadas said that identity of sign and mark must be interpreted strictly and that, for a sign to be earlier to any identical mark, it must reproduce the earlier mark without any modification or addition. Here the addition of the “EASY” prefixed words constituted an addition or modification to the opponent’s earlier mark, since the earlier mark did not include any words at all. The fact that the opponent could choose to use its mark together with words did not mean that such words could be taken to form part of their monopoly. Instead, what was relevant was the fixed point of reference in the earlier mark with which the comparison with later marks could be made. For the marks to be identical, the word “EASY” had to be contained within the earlier mark; the inclusion of the word “predominant” in the reference to the use of colour by the opponent in his registration did not result in wording being included in the opponent’s monopoly.

The IPKat notes that this is the first case that he is aware of where the registration of a single colour as a mark has been compared to a later mark or use. He expects many other tricky problems to filter through in this area if traders are able to secure single colour registrations, particularly how one judges whether a specific shade of a colour that is used by an applicant/defendant is similar or identical to the strictly delimited (as all colour marks must be after Libertel) colour of an earlier trade mark.

All things orange here, here, here, here , here and here