I See Your (True) Colours - The Registerability Of Colours And The Names Of Colours As Trademarks

Author:Mr Avi Ordo and Dvir Rosenfeld
Profession:S Horowitz & Co
 
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Colours symbolize many things in our daily lives and the meanings attached to different colours are expressed in various areas, for example: signs (green for approval and red for prohibition); emotions (green for jealousy and red for passion and love); culture (green for money); or authority (blue for the police and red for ambulances). Colours are utilized to convey messages and it is clear that the human brain has become accustomed to identify and associate colours with different categories it encounters. Bearing that in mind, the question arises whether a person or entity can make use of colours per se (i.e., not in a specific shape, like a yellow circle or a blue square, but yellow or blue in any form) in order to mark itself and its specific goods and moreover, whether the said person or entity can acquire the colour and use it exclusively. In other words, does the possibility exist for colours to be registered as trademarks? Over the years, rulings in Israel have dealt with this question in various ways. Principally, a colour is indeed registerable in Israel as a trademark. In the famous Kodak case (225/96 Eastman Kodak Company v. Conco Ltd.) the District Court held that a colour per se is eligible to be registered as a trademark since it is capable of acquiring secondary meaning and distinctive character. However, in the Strauss case (10603/09 Strauss Ice-cream v. Noga Ice-cream) as well as in similar cases, the District Court narrowed the rule and held that usually, no monopolistic intellectual property protection (based on trademark or other grounds) may be conferred on a particular single colour, since colours are in the public domain and should not be granted exclusively to one person or entity. The court further clarified that the exception to this rule is in the very rare situation in which a colour is found to have acquired a secondary meaning among consumers who identify the product with that particular colour for an extended period of time, as was held in the Kodak case, concerning the colour yellow. Recently, in a decision emanating from an application filed by "Tnuva" (the largest food concern in Israel) for the registration of a trademark on a particular shade of gold, the Commissioner of Patents, Designs and Trademarks, Mr. Ofir Alon, revisited this issue. Briefly, Tnuva filed two similar applications (Applications for Registration of trademarks nos. 271714 and 271715) to register the colour gold (Panton 871) as a...

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