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Giving Colour-Based Trademarking the Green Light

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We all recognise how important branding can be for any business when marketing their products or services. This can be particularly important for start-up businesses trying to distinguish themselves in the marketplace.

Greenaway Scott’s associate director of commercial Lorna Bolton said the firm would always advise any business to thoroughly research the industry they are targeting at an early stage to prevent inadvertent infringement of a competitor’s rights. Once this is completed, the next step is registering any applicable trademarks in the jurisdiction in which the business will operate, and will require protection in.

This is not only important for start-up businesses, but also for established businesses, as it is important to protect your branding and registering a trademark is one way to do this. Whilst you can register a figurative trademark for any logo that you may be using in your business, which could include colours as part of the image, a number of high-profile companies have attempted to specifically protect the colour alone.

The rules on this vary in each jurisdiction, however in the EU it is possible to register a trademark which consists solely of a colour if an enhanced level of distinctiveness can be proved.

For certain products colour may be a vital part of the branding. One of the most iconic examples of the importance colour can play in a brand’s identification are the designer Louboutin shoes.  The brand is famous for its distinctive red soled shoes which are recognisable worldwide. Louboutin currently has an EU trademark which includes its red colour, however the trademark combines both colour and shape, in that it protects the colour applied to the sole of a shoe.

A Dutch high street chain has been locked in a legal dispute with Louboutin since 2012, when the chain started selling black and blue shoes also with a red sole. Louboutin claimed that the shoes infringed on their brand’s trademark.

The case has now made its way to the European Court of Justice and Maciej Szpunar, an advocate general for the court, has stated that the red soles are not a separate entity from the shape of the high-heeled shoes. Shapes cannot typically be trademarked under EU law and therefore this could lead the way for the trademark to be declared invalid.

Crucially, if Louboutin lose their trademark, it could open the door to other fashion brands looking to sell red soled shoes.

This could significantly affect the value of the Louboutin brand, which is recognised thanks to its distinctive soles. This has long been an issue in the fashion industry, and trademarks have been extremely important particularly to protect against counterfeiting.

This issue is not limited to fashion, however, with Cadburys currently holding a trademark for its recognisable purple wrapper colour.

Therefore, it is important that you get your branding clear at the outset and any names, logos, signs, representations, or colours that have importance to your branding registered as appropriate.

If you would like advice on registering your trademarks please contact the Commercial team by emailing [email protected] or visit our website at www.greenawayscott.com.

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