Non-traditional pharma
trademarks: colours

What is a colour mark?

In the UK and EU, a colour mark is a specific colour or combination of colours which can be used to indicate the origin of goods. This is different from a logo in colour, which will have a particular design. Instead, what is protected is the particular shades of colour and, where there is more than one, the systematic arrangement of the colours in a predetermined and uniform way.

What are the requirements for registration?

To register a colour, it is necessary to file an image of the colour or colours, identifying the specific shade using a recognised colour code, such as Pantone, Hex, RAL, RGB or CMYK.

This can be seen in Verla-Pharm Arzneimittel’s EU trademark registration for the colour combination Yellow Pantone 121 CV and Blue Pantone 313 CV, covering pharmaceuticals. The mark appears to correspond to the arrangement of the colours used on its Magnesium Verla product packaging.

What are the challenges?

It can be particularly challenging to register colour marks as they are typically not considered to function as trademarks upon creation. A consumer is more likely to see colour as decoration and not as an indication of origin unless educated otherwise.

When such an objection is raised, it may be possible to overcome it by gathering and filing evidence of use of the mark, demonstrating that consumers have come to see the colour or colour combination as a trademark. This is known as acquired distinctive character.

This is the process that Eli Lilly and Company followed in order to register the colour combination corresponding to their PROZAC antidepressant in the EU.

The registration covers “Antidepressants, in capsule form, containing fluoxetine hydrochloride” and has an accompanying description which reads “the mark consists of the colour green applied to one half of a solid pharmaceutical product in oral dosage form, namely a standard pharmaceutical capsule, and the colour cream applied to the other half of the product, the colours being applied respectively to opposite ends of the product; the green being a soft jade green (Shionogi Colour reference 220) and the cream being a soft golden cream (Shionogi Colour reference 83)”.
The evidence filed to support the application included examples of how the capsule appears in the blister pack.

However, the threshold for proving acquired distinctive character is high. In 2015, Glaxo Group applied to register the colour purple (Pantone 2587C) in respect of “Pharmaceutical preparations for the treatment of asthma and/or chronic obstructive pulmonary disease”.

An objection was raised on the grounds that the mark is devoid of distinctive character, following which Glaxo Group filed evidence of use, including samples of packaging and marketing materials, sales figures and survey evidence. This was initially accepted as evidence of acquired distinctive character. However, several third parties filed observations, contesting the decision to accept the mark. The application was then rejected.

A number of flaws in the evidence were highlighted, including the fact that there seemed to be inconsistency in the particular shade of purple used.

In September 2020, the General Court upheld the previous decisions, confirming that Glaxo Group had failed to show that the particular shade of purple they had applied to register had acquired distinctive character in every Member State of the EU.

Can colour trademarks be enforced?

Just like more traditional types of trademarks, colour marks can be used to prevent third parties from using and registering identical and similar marks for identical and similar goods and services. However, the circumstances in which they can be enforced are likely to be more limited, as any additional elements in the later mark can easily be enough to prevent consumer confusion arising.

By way of example, in 2013, Uni-Pharma Kleon Tsetis, Farmakeutika Ergastiria AVEE applied to register the following mark for pharmaceuticals in the EU:

Bayer AG filed an opposition based on a number of registered and unregistered marks related to their ASPIRIN brand, including the following colour combination marks:

The opposition was rejected. On appeal, the General Court of the European Union held that, whilst the marks share the same white and green colours, as well as the horizontal layout of those colours, the shared features are not significant enough to offset the differences between the marks. In particular, the curve on the right side of Uni-Pharma’s mark is far more emphatic than that on the left side of Bayer’s registration No. 7007008.

Furthermore, the image of a tablet is present in Uni-Pharma’s mark, but not in the earlier marks, and the tones of green are not exactly the same. The Court also felt that the overall impression produced by Uni-Pharma’s mark is dominated by the word element of that mark, for which there is no equivalent in Bayer’s marks.

Therefore, whilst it may be worth protecting a colour which plays a significant role in the overall brand aesthetic, particularly as the registration may act as a deterrent to third parties, it is important to manage expectations and understand that it will be more difficult to enforce than a traditional trademark and it will only be appropriate to do so in certain, quite specific circumstances.

Rebecca Anderson-Smith is a partner and chartered trade mark attorney with IP firm Mewburn Ellis LLP