European Union: IP And Colours: Where Do We Stand And How Far Can We Go?

Last Updated: 15 April 2019
Article by Christina Guazzi and Lin Liu

Many enterprises consider one or more shades to be distinctive of their brand and deserving of protection against use by competitors. However, it has not proved easy to obtain such protection under trade mark law. Although it is in theory possible to trade mark a colour or combination of colours, there is still little guidance regarding the requirements for valid colour marks. Recent cases emphasise the particular difficulties in representing such marks sufficiently precisely.

Barriers to registration

Colour marks must overcome two main hurdles: (1) the colour(s) must have acquired distinctiveness, and (2) the mark must be satisfactorily represented in the application for registration.

(1)  Distinctiveness: Colour is generally seen as a decorative property of goods, rather than a sign which conveys a message to consumers as to the origin of a product. Therefore, in order to be registrable, a colour mark must have become distinctive of a particular brand through extensive use.

 (2)  Representation: All colour marks must satisfy the Libertel test which requires that the precise shade of colour for which registration is sought should be identified through an internationally recognised identification system such as Pantone.  Combinations of colours must additionally be arranged systematically in a predetermined and uniform way (Heidelberger Bauchchemie). With the aim of providing more flexibility to register “non-traditional” trade marks such as sounds and smells, the recent EU trade mark reforms have removed the requirement for “graphical representation” of a trade mark. However, in the absence of any specific guidelines as to how to register such marks, it is not clear what exactly constitutes sufficient representation under the new legal regime. Recent case law suggests that the 7 Sieckmann criteria – requiring a mark to be clear, precise, self-contained, easily accessible, intelligible, durable and objective – remain the touchstone in determining the validity of a colour mark.

Colour marks in the Courts

Recognising that colours can significantly improve brand recognition, brand owners are increasingly turning to non-conventional colour marks to protect the colours associated with their brands. These marks are often considered to be of great value to the proprietors. However, although the case law in this area is limited, these cases suggest that it is difficult to obtain a valid colour mark.

Cadbury purple

Following a hard fought battle with Nestlé, last month Cadbury surrendered its 1995 registration for “Cadbury purple” (i.e. Pantone 2685C) “applied to the whole visible surface or the predominant colour applied to the whole visible surface of the packaging of the goods”. The distinctiveness of its characteristic purple (which has been used in various permutations for over 100 years and even adorns the train station serving Cadbury’s Bourneville base) was not contested. However, the Court of Appeal had previously found the trade mark to be invalid because the “predominant colour” language was found to cover an unknown number of potential signs. A subsequent attempt in 2018 to separate out a valid mark for purple applied to the ‘’whole visible surface’’ of the packaging did not succeed.

One of the drivers behind the Courts’ reluctance to uphold colour mark registrations is a policy concern to avoid awarding businesses potentially permanent monopolies over certain colours – particularly where a potential infringer cannot easily understand the precise form of the mark. In this case, Nestlé perceived a threat to its lurid purple Quality Street (in addition to an opportunity to challenge its rival, following Cadbury’s opposition to its own registration of the shape of its Kit Kat bar as a trade mark).

Red Bull

It might therefore seem that the chances of obtaining a valid registration are higher where, rather than “monopolising” a single colour, a trade mark consists of a combination of two or more colours. However, a decision of the EU General Court in late 2017 regarding the blue and silver used on Red Bull cans “applied in equal proportion and juxtaposed to each other” highlights the difficulty in defining the precise arrangement of the colours. The registration was found to cover numerous different combinations, which would not permit the consumer to perceive and recall any one particular combination (a prerequisite for the colours to function as a sign indicating the goods’ origin).

Glaxo v Sandoz

In a similar recent UK case (again concerned with the colour purple) that was decided before the General Court’s decision in Red Bull, the High Court found that Glaxo Smith Kline’s mark for the two shades of purple used on its blockbuster inhaler (shown below) was invalid because it covered a multitude of different forms. Therefore, the mark was held not to be sufficiently clear, precise and uniform. This decision was upheld by the Court of Appeal based on their determination that the registered mark was not merely the visual representation of these colours as used on the inhaler, but also the more abstract description provided by the applicant which referred to a darker purple applied to “a significant proportion of an inhaler” and a lighter shade applied to the remainder.

Glaxo’s case continues as a passing off claim against Sandoz in relation to its use of a similar purple get up for its own inhalers. This would perhaps be considered the more conventional approach to protecting a company’s “get up”, including the colours of its packaging. However, the requirement to meet the high bar of proving misrepresentation in such cases means that it remains attractive for companies to also seek the protection of colour marks.

Suggestions for how to succeed in obtaining protection:

Although it is clear that the law envisages that colour marks, including combination colour marks, are capable of registration, the question remains how an applicant can describe the application of the colour and/or the combination of several colours sufficiently precisely to obtain a valid trade mark.

Examples of valid colour marks include the colour red (Pantone 18-1663TP) applied to the sole of a shoe in Louboutin, where the mark had also acquired distinctiveness through extensive use before registration, including through an extensive advertising campaign.

Another successful example is the Mars UK mark for the purple used on its Whiskas cat food and cat milk. The OHIM Board of Appeal decided that the colour mark had acquired distinctive character so as to allow it to operate as a trade mark.

It therefore seems that it is possible to succeed in obtaining a colour mark where the form of the sign is clear, the colours are specifically defined using a recognised identification system and the spatial delimitation of the sign is sufficiently precise.

However, marks for combinations of colours face particular difficulties; Red Bull has now appealed to the CJEU arguing that the decision of the General Court effectively limits colour combination marks to figurative, position or pattern marks in colour, rendering the protection of colour combination marks per se impossible in practice. It remains to be seen whether the CJEU will take this opportunity to clear up some of the grey areas and introduce clear and balanced rules on colour combination marks.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions