When we try to obtain a certain kind of good for someone who has forgotten the brand name, we are sometimes told to look for it by its color, such as “a pack of cat food in purple packaging.” Given that colors may serve as a sign indicating the source of goods, can a single color be registered as a trademark?
According to Article 18 of the Trademark Act in Taiwan, a trademark shall refer to any sign with distinctiveness, which may, in particular, consist of “colors,” and the distinctiveness of a trademark refers to the character of a sign capable of being recognized by relevant consumers as an indication of the source of goods or services and distinguishing goods or services of one undertaking from those of other undertakings. Based on this Article, it seems that the answer to the above question would be “yes.” However, how does the trademark owner prove the distinctiveness of a single-color trademark as mentioned in the aforesaid Article?
Distinctiveness of a single-color trademark
Since the basic function of a trademark is to distinguish the source of goods or services, like other types of trademarks, a single-color trademark can be registered only if it is with such function. For example, a color is not registrable if it is a descriptive color or a generic color.
As a single-color trademark is often perceived as an ornament or descriptive element by consumers, it is usually considered not inherently distinctive. Actual evidence of use needs to be submitted to prove that the applied-for single-color trademark has acquired distinctiveness under current practices. To be more specific, the applicant must establish the fact that the single-color trademark, after being used in the market, is considered by relevant consumers a mark indicating and distinguishing a particular source.
For proving the distinctiveness of a single-color trademark, Point 4.2.3 of the Examination Guidelines on Non-Traditional Trademarks [1] stipulates,
“It is easier to prove the distinctiveness of a color trademark if the applicant particularly emphasizes in advertising or marketing campaigns the specific color.
For example, the expressions such as ‘please identify this unique color,’ ‘please look for this attractive color,’ ‘look for the orange box’ or ‘unique color’ are all used to educate consumers to consider the specific color(s) as a source indicator of the goods or services. Additionally, the extent and the duration of use of the color(s) on the designated goods or services, the sales status, the advertising expenditures, and the consumer surveys are also factors for determining whether the color is distinctive or not.”
Based on this point, we can learn that how a single-color trademark is used by the owner will have great implications on the chance of success for such color being allowed registration as a trademark.
Judgment of the Intellectual Property Court 2012 Xing Shang Su Zi No. 179 [2]
Below is a well-known case relating to a single-color trademark, which reveals how the court evaluates evidence of use as well as relevant arguments.
- Synopsis
On December 3, 2009, Mars, Incorporated (hereinafter referred as “the Plaintiff”) filed an application in Taiwan for a single-color trademark “
” (hereinafter referred as “the mark”) designated for use on the goods “food for cats and kittens and non-medical feed additives” in Class 31. After examination, the Taiwan Intellectual Property Office (hereinafter referred as “the Defendant”) considered that since the mark consists of only a single purple color, when it is used on the designated goods, consumers will not consider it a sign indicating the source of goods; moreover, according to the materials provided by the Plaintiff, the acquired distinctiveness of the mark could not be established. Therefore, a Disposition of Refusal was issued by the Defendant. The Plaintiff then lodged an Administrative Appeal with the Petitions and Appeals Committee against the decision made by the Defendant but was rejected. The Plaintiff was not satisfied and thus lodged an Administrative Suit before the Intellectual Property Court (now known as the Intellectual Property and Commercial Court) [3].
- The Intellectual Property Court’s (hereinafter referred as “the court”) opinions
○ Inherent distinctiveness
According to the court, the mark consists of only a single purple color, which is a common color used on the packaging of products; when used on the designated goods, consumers will consider it as an ornamental color on the packaging but will not consider it a sign indicating the source of goods. The mark is not capable of distinguishing goods or services of one undertaking from those of other undertakings and is thus not distinctive.
The court also pointed out that although there might be various versions of purple, in general they are still purple, and consumers may not distinguish the differences between them. Also, referring to the packaging of the Plaintiff’s products, other colors are also presented in addition to the color of the mark. Moreover, the wordings “WHISKAS” and “偉嘉,” which have an impression on consumers, are placed in the middle of the product packaging and are even labeled with the “R” symbol. Consumers will consider the wordings as signs indicating the source of goods and will simply consider the mark as a background color.
○ Acquired distinctiveness
As for the sales figures, list of sales channels, market surveys, etc., presented by the Plaintiff for proving the acquired distinctiveness of the mark, the court considered that their primary brand is “WHISKAS” or “偉嘉,” and whether the mark is included is unknown. Thus, the court indicated that such materials cannot serve as evidence for proving the acquired distinctiveness of the mark. The court further indicated that, when selling products, many businesses have used a certain color on the product packaging; therefore, we cannot assert that the mark has acquired distinctiveness simply because of the long term use such certain color on the “WHISKAS” or “偉嘉” products.
The court mentioned that among the packaging or advertisements of the Plaintiff’s products, the Plaintiff does not particularly emphasize the specific color or educate consumers to consider the specific color as a source indicator of the goods or services. Furthermore, the mark is used together with the wordings “WHISKAS” and “偉嘉” and other cat images, but the Plaintiff did not provide evidence to prove that after removing the words/images, relevant consumers will consider that the products in the single purple color come from the Plaintiff. In sum, the court considered that the evidence provided by the Plaintiff was insufficient to prove the acquired distinctiveness of the mark.
Conclusion and Recommendations
Observing from the above judgment, we can learn that due to the nature of a single-color trademark, proving its inherent distinctiveness is extremely difficult for the owner, and the key to obtaining registration of a single-color trademark will be the capability of proving that such mark, after being extensively used by the owner, has been recognized by relevant consumers as a sign indicating the source of goods or services. Moreover, if such mark is usually used together with other words, images, etc., the owner will also have to prove that after removing the words/images, relevant consumers will still consider that the products in such single color come from the owner.
According to the information published by the Taiwan Intellectual Property Office (as of July 31, 2023) [4], the last time a single color was approved for registration was in 2005, almost 20 years ago. Most of the color marks that were allowed to be registered are multiple-color marks, of which the latest registration was 2018. Given that obtaining protection of a single-color trademark is a challenging task, some suggestions are provided below.
- Consistent, continuous and extensive use of a single-color trademark
Make sure that the same shade of color is used consistently on any kind of promotional materials or product packaging, to the widest extent possible.
- Highlight the use of a single-color trademark
Ensure that the color is empathized when selling or promoting products. Try to guide consumers to consider such a specific color as a source indicator of the goods or services by putting the color on the most prominent place on the product packaging or promotional materials. Make use of expressions such as “please identify this unique color,” “please look for this attractive color,” “look for the orange box” or “unique color,” etc., [5] in the advertisements or other promotional materials.
- Regular collection of evidence of use
As proving the acquired distinctiveness is necessary for obtaining registration of a single-color trademark, evidence of use is suggested to be collected regularly as soon as the owner starts to use its single-color trademarks. Generally, the more evidence showing use of the mark is submitted, the better the chances are of establishing the acquired distinctiveness. The following materials may serve as evidence of the acquired distinctiveness of a trademark [6]:
○ The manner of use of the trademark, the length of time of such use and the use by competitors in the
same trade.
○ Sales volumes, sales figures and market share.
○ Advertisement volumes, advertisement expenses, materials for promotional activities.
○ Sales territories, market distribution, points of sale or display.
○ Registration certificates issued in different countries.
○ Market survey reports.
There are not many prior cases relating to single-color trademarks in Taiwan that we can follow. The attitude that the Taiwan Intellectual Property Office (TIPO) adopts toward the examination of single-color trademarks tends to be strict, and their attitude in the future is uncertain. Through sharing the aforesaid Judgment of the Intellectual Property Court, organizing the examination guidelines published by the TIPO and providing the aforesaid suggestions, hopefully some light has been shed on the distinctiveness issues regarding the examination of single-color trademarks in Taiwan.
*Section Chief of Trademark Division at Tai E International Patent & Law Office
References
[1] “Examination Guidelines on Non-Traditional Trademarks” published by the Taiwan Intellectual Property Office
[2] Judgment of the Intellectual Property Court 2012 Xing Shang Su Zi No. 179 [智慧財產法院101年行商訴字第179號判決]
[3] The Taiwan Intellectual Property Court changed its name to “Intellectual Property and Commercial Court” on July 1, 2021.
[4] The online database of the Taiwan Intellectual Property Office. Retrieved from: https://cloud.tipo.gov.tw/S282/OS0/OS0101.jsp
[5] Point 4.2.3 of “Examination Guidelines on Non-Traditional Trademarks” published by the Taiwan Intellectual Property Office
[6] Point 5.1 of “Examination Guidelines on Distinctiveness of Trademarks” published by the Taiwan Intellectual Property Office
