Not so black and white – colour words as trade marks?
Monday 1st April 2019
Article written by: Anna Bargh
Does your business have a strong colour theme that sets you apart from other traders? A colour or colours that consumers identify solely with you? Think about the colour red for Coca-Cola, green for BP, yellow for the Yellow Pages, or blue for Facebook?
If you do, a recent High Court decision may help you obtain trade mark protection for the name of the colour itself.
It has long been established that to obtain registration of a “colour mark” to protect the colour itself, you must file evidence that the colour can act as a badge of origin for the goods and/or services in New Zealand.
However, Beiersdorf AG (owner of the NIVEA trade mark) has recently succeeded in its case against Unilever (owner of the DOVE and REXONA trade marks), protecting its right to use and register the term “BLACK & WHITE” for deodorants and anti-perspirants without filing evidence of use of the mark in New Zealand. The mark was considered inherently capable of distinguishing, and therefore registrable.
Under challenge from Unilever, the Assistant Commissioner found the mark was non-distinctive. On appeal to the High Court, however, this was overturned, and the mark BLACK & WHITE proceeded to registration.
In its decision, the High Court stated that in the absence of any evidence to the contrary, the mark BLACK & White, at face value, is distinctive. If Unilever had provided evidence that it had used the mark BLACK & WHITE as of the relevant date, and in New Zealand, there may have been a different outcome.
So, if you are thinking of registering a colour as a trade mark but you do not have enough evidence of use, perhaps it could be worth trying to register the names of the colours first.