Trademark protection of colours- to be or not to be?

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Fun Facts- Did you know that the concept for the Louboutin red originated when Christian Louboutin painted a sole red with nail varnish borrowed from an assistant?
Traditionally, the concept of trademarks has been restricted to marks which are capable of being experienced visually and orally. However, in modern times, this position has changed as companies are continuously distinguishing their brands by applying specific colours to the same. Thus, any attempts by competition to “copy” said colours would be met with a strong resistance.In 2012, the French designer- Louboutin took the Dutch high street shoe chain- VanHaren to a Netherland Court for selling red-soled shoes. In response to this, VanHaren argued the existing Louboutin trademark was invalid. The District Court in The Hague consequently granted a temporary injunction against Van Haren, which appealed against the decision. In 2014, the case was referred to the European Court of Justice (ECJ}.Today, the European Court of Justice’s advocate general Maciej Szpunar stated that the combination of a colour and a shape may be refused trademark protection. He expressed “doubts as to whether the colour red can perform the essential function of a trademark, that of identifying its proprietor when that colour is used out of context, that is to say, separately from the shape of a sole. Note that Judges in national courts typically, though not always, follow advice from the European Court of Justice’s advocates general. We are awaiting the ECJ’s position on this.

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The African Position on colour trademarks- An analysis of some African Countries…

Most African countries are reluctant to protect single-colour marks, however, most of them accept a combination of colours.

South Africa-

·         In 2004, the Trade Mark Registry refused an application by Cadbury to register the colour purple for chocolate.

·         A few years ago, the Advertising Standards Association held that SABMiller, manufacturer of Castle Lite beer, had through 20 years of usage, built up an advertising goodwill in the colour combination of silver and green

Nigeria

·         A trademark may be registered with or without limitations to colours.  Where a trademark is registered in colour, the protection afforded is limited to the colour(s) registered.  A plain registration affords protection to all colour presentations of the trademark,

·         A combination of colours is registrable as a design

OAPI- This is an intellectual property organization, made up of 17 French-speaking member states, headquartered in Yaoundé Cameroon.

·         Combinations or arrangements of colours are registrable as Trademarks

Aripo

·         Colour marks are subject to protection provided that where colour is claimed to be a distinctive feature of the mark, the applicant shall make a distinctive statement to that effect as well as the name or names of the colours claimed and an indication of the principal parts of the mark which are in that colour.

·         Each designated Member state has the right to refuse to register a colour mark based on its local law, this means that the member state may refuse a registration of a single colour mark which is not eligible for protection in its country.

In conclusion, if your intention is to file a colour trademark in Africa, anticipate objections. It may be difficult to obtain registration in certain jurisdictions and less difficult in others. It will be helpful for the trademark to have acquired some form of distinctiveness by virtue of use.