The colour yellow – brand or not?

A recent decision confirms that a high level of factual distinctiveness will be required before a single colour can be registered as a trade mark in New Zealand.

Background

The trade mark registration for the colour yellow held by Telecom IP Limited in New Zealand has been the subject of a recent decision by the Commissioner of Trade Marks.  The decision was the culmination of an application made by Cabbage Tree Press Limited for the expungement of the colour yellow registration from the Register of Trade Marks on the grounds that the trade mark was entered on the Register without sufficient cause as it did not meet the requirements for registrability under the Trade Marks Act 1953 (the registration was filed in 1999 and therefore governed by the Trade Marks Act 1953 rather than the current 2002 Act).  It was argued by Cabbage Tree Press Limited that the colour yellow was not distinctive and therefore should not have been registered as a trade mark.

The registration under attack was made in respect of "electronic telephone directory services enabling users to access business information." 

The decision

Whilst the registration of a colour or colours is specifically allowed under the Trade Marks legislation in New Zealand, the decision of the Commissioner to order the expungement of the registration highlights the difficulty in establishing that single colour trade marks actually function as trade marks or badges of origin as opposed to merely being colours associated with a business or associated with a brand image - the latter not being sufficient to justify registration.

Despite the almost iconic status of the Yellow Pages directories of Telecom in the New Zealand market, the Commissioner of Trade Marks considered that Telecom had not satisfied the onus of establishing that the colour yellow itself had been used as a trade mark or a badge of origin for the services in question despite being an important part of the Telecom brand image.

Practical consequences

The decision offers up some very practical issues to be considered by brand owners who may be contemplating seeking registration of colour trade marks.

Telecom had used different shades of yellow and specifically had not restricted use to the particular Pantone shade which was the subject of the trade mark registration in question.  Furthermore there had been no consistent use of the colour – sometimes it had been used as a background colour, sometimes used to highlight headings and other times used for text.  This inconsistent use of the colour did not assist Telecom's argument that the colour yellow was being used as a trade mark or badge of origin.

Furthermore, Telecom could offer no evidence that it had specifically promoted the colour yellow as a trade mark.

Although the Commissioner of Trade Marks accepted that the colour yellow had been used by Telecom over a number of years on the hard copy Yellow Pages directory of which there had been significant sales, as well as used for the Internet version of the Yellow Pages directory of which there were many users, this on its own was not sufficient to constitute evidence that the colour yellow was distinctive in relation to these services.  The need for very specific evidence of distinctiveness was not met.

The case establishes that evidence of distinctiveness in relation to single colour marks requires more than simply filing evidence of long and extensive use of the colour in relation to the business.  A brand owner must be in a position to demonstrate that the colour itself has been promoted as a brand and used extensively so that it is recognised in the marketplace as a badge of origin for the goods or services in question.  Telecom could not prove that the public would expect that the electronic directory services were linked with Telecom because they were offered by reference to the colour yellow.

Another factor which weighed against Telecom was the fact that it had invariably used the colour yellow in conjunction with one or more of its other prominent trade marks, such as the words YELLOW PAGES and the well known Walking Fingers logo.  This made it difficult to argue that the colour alone was operating as a brand (this may be a significant hurdle for many brand owners). 

Clearly any brand owner contemplating registration of a single colour trade mark needs to be in a position to demonstrate consistent use of the same shade of the colour as is the subject of the anticipated application for registration.  There needs to be a consistent usage of the colour and promotion of the colour in its own right as a brand.  Furthermore, linking the colour to other brands - particularly word or logo brands, will give rise to a question as to whether the distinctiveness relates to those other brands rather than merely to the colour itself – highlighting the need for direct evidence that the colour is recognised as a badge of origin in the marketplace.

It remains to be seen whether Telecom will appeal this decision.

Enquiries and information

For more information on any of the cases, articles and features in Commercial Quarterly, please email Diane Graham or call her on 64 9 916 8849.