Yes, and two cases show what decides it. Not how famous the colour is, but how precisely the mark is defined.
Yes, and 2 cases show what actually decides it. Counted from the two decisions, a purple mark was left open to challenge because its description was not precise enough, and a red sole mark survived because a colour applied to a part of a product is not the same thing as a shape. Definition decides, not fame.
The case that failed on wording
In Société des Produits Nestlé SA v Cadbury UK Ltd, the Court of Appeal in England and Wales held that the description of Cadbury’s purple mark was not sufficiently clear and precise, which left the registration exposed to invalidity.
The standard the description has to meet is published. The UK Intellectual Property Office writes in its Manual of trade marks practice that “In Libertel C-104/01 the ECJ confirmed that to be represented graphically, colour marks must be presented in a way that is ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective’ as per Sieckmann C-273/00.” Read what that case is about before you take the wrong lesson from it. The colour was famous, the association was real, and none of that was the problem. The problem was the words used to define what was being claimed.
The case that survived a different argument
In Case C-163/16, decided in June 2018, the Court of Justice of the European Union held that a mark consisting of a colour applied to the sole of a shoe does not fall under the prohibition on registering shapes, since such a mark does not consist exclusively of a shape.
The Court’s finding is narrower than the headlines suggested at the time. It did not establish that colours are easy to protect. It settled which objection could not be used against that particular mark.
Both cases, and what they share
| What founders assume decides it | What the cases turned on |
|---|---|
| How recognisable the colour is | How precisely the mark was described |
| How long it has been used | Whether the claim was for a colour, a shape, or a colour in a position |
| How much was spent on it | Whether the objection raised actually applied |
The pattern is consistent. Colour protection is a drafting problem before it is a marketing one, and the drafting happens with a trade mark attorney, not with a designer.
Three things a registry needs from you
A colour mark is a trade mark that claims a colour, or a colour applied in a stated position, rather than a word or a logo. The two cases point at the same practical requirement for one: a claim a registry can read without guessing.
- The colour identified by a reference value, not by a name.
- A statement of exactly how and where the colour is applied.
- Evidence that buyers connect that application to you rather than to the category.
A founder who has run one colour across a range for three years has the third ingredient already; what is usually missing is the first two, written down somewhere other than in a design file. MarkaWorks keeps that record in the guidelines, so the evidence exists before anybody needs it.
A claim you will be quoted
Somewhere in this conversation, somebody will tell you that colour increases brand recognition by a specific percentage.
The percentage was removed from our own design knowledge base because the sourcing behind it does not hold. If a supplier or an adviser uses it to justify the cost of a colour filing, ask for the study, and treat the answer as information about the adviser.
What to do instead of chasing the colour
Protecting a colour is a long, expensive and uncertain route, and it is rarely the first thing a founder should spend on. There are cheaper moves that do a similar job.
- Use the colour consistently enough that the association can be evidenced later, which means recording the exact values per process and applying them across the range rather than approximately.
- Register the things that register easily first: the name, the logotype and, where relevant, the pack shape.
- Then, if the colour becomes central to how buyers find you, take the question to an attorney with the evidence already assembled.
MarkaWorks records brand colour values per process in the guidelines for this exact reason: the record is useful the next time the palette is applied, and the same record supports a claim years later.
Where this article stops
The article does not tell you whether your colour is registrable, and it cannot. That question depends on your market, your category, your evidence and the wording of the application.
Take three things to an attorney: your colour values, the date you started using them, and the range of products they appear on. Those three turn a hopeful question into an assessable one.
The colour record MarkaWorks keeps
MarkaWorks records your brand colour values per process in the guidelines, so the record is useful the next time the palette is applied and supports a claim years later. We keep it so that the three things an attorney asks for, the values, the date and the range, exist before anybody needs them. Those guidelines are a deliverable of the brand strategy and visual identity service.
To set up that colour record for your own brand, get in touch through the contact page.
Common questions about colour trade marks
Is a famous colour enough to get a colour trade mark?
No. In the Cadbury purple case the colour was famous and the association was real, but the description was not sufficiently clear and precise, which left the registration exposed to invalidity. The definition decided the outcome.
Which details does a registry need for a colour trade mark?
3 things: the colour identified by a reference value rather than a name, a statement of exactly how and where the colour is applied, and evidence that buyers connect that application to you rather than to the category.
Does a colour on a shoe sole count as a shape for trade mark purposes?
Not for a mark consisting of a colour applied to the sole of a shoe. In Case C-163/16 the Court of Justice of the European Union held that such a mark does not consist exclusively of a shape, so the shape prohibition could not be used against it.
How can I prepare a colour for a future trade mark claim?
Record the exact colour values per process and apply them consistently across the range, so the association can be evidenced later. Register the name, the logotype and, where relevant, the pack shape first, then take the colour to an attorney with that evidence assembled.
More brands we brought to life:
