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Colour me beautiful

Two mobile phone giants will be slugging it out at the High Court later this year as each claims the right to use the colour orange. Legal and brand guru Ardi Kolah has been talking to both sides in the dispute.

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When the Godfather of modern design, Wally Olins, was faced with creating a new brand identity for a mobile phone network for Hutchinson, he chose a colour. And named the brand after it. 

It's hard to think of the colour orange without at some point thinking about text messaging.  Perhaps that's an extreme example, but it worked spectacularly well. 

The use of colour is often the unconscious differentiator between one standard product and another. Take, for example, Apple's phenomenal iPod portable player.

It's white, innit?

And because its colour is so distinctive to the fashion-conscious cognoscenti, that may be all that's required to trigger future sales.

The colour of the iPod is a badge of origin. iPods probably wouldn't sell as well if they were a subtle shade of brown because white is cool and has been established by Apple as such.

Marketing and advertising agencies agonise long and hard when deciding which colour, or shade, accurately reflects the brand's values. 

So if colour is so important, is it capable of legal protection?

The Libertel case (ECJ, 2003)

The Libertel case decided by the European Court of Justice (ECJ) in 2003 clearly established the principle that single colours are capable of acting as trade marks and can be registered, providing that they are defined in a sufficiently clear way.

This is generally done by using a Pantone Number. If it can be proved that the purchasing public would inherently, or over a period of time, take the colour as distinguishing the goods and services of one trader from those of another, then the colour can be registered.

But it's never that straightforward.

Last year, Orange sat down with easyMobile to discuss the use of the colour orange.  After six months of negotiations, Orange failed to receive sufficient assurances from easyMobile that it wouldn't infringe its intellectual property rights (IPRs) regarding the use of the colour orange. 
The first salvo in the colour clash was fired in February 2005 when Orange commenced legal proceedings in the High Court for breach of trade mark and passing off.  Specifically, Orange had registered the colour orange Pantone 151 for handsets and telecoms services as a trade mark in the UK.

Undeterred, easyGroup's founder, Stelios Haji-Ioannou, went ahead and in March 2005 launched his no-frills low-cost mobile phone service easyMobile under the corporate colours of the Group.

A spokesperson also said that the company had no intention of attempting to stop competition but was acting to protect its registered IPRs from being infringed.

Orange also claimed that the use of the colour orange to promote easyMobile would cause confusion for consumers who couldn't tell the difference between the two competitors, although it refused to elaborate on the extent of the evidence it had which would show confusion.

When I phoned the corporate affairs department at easyGroup, it was similarly tight-lipped about the nature of its defence but helpfully pointed me in the direction of a press statement from Haji-Ioannou issued on 18 February 2005 which began "I will see them in court."

His statement went onto to talk about the validity of Orange's trade marks and the fact that the easyGroup had been using the colour orange for the past 10 years. 

"We have nothing to be afraid of in this court case," said Haji-Ioannou and he dismissed the passing off claim as "laughable".

I spoke to Alan Sams, an intellectual property lawyer at SK Sport & Entertainment.  In his view, "the fact that Orange brought the case prior to the release of easyMobile suggests that there may be evidence in the negotiations that led them to believe that easyMobile intended marketing themselves in a similar manner to Orange (re Branding)

"However, I would imagine that any argument for confusion would be pretty weak given that no product had been released.  The fact that both companies have trade mark applications/registrations in relevant classes for the colour orange could be relevant.  However, it would really be dependent on similarities between the marks and I imagine it would be pretty difficult to convince a court that confusion existed in a product that didn't exist in the market place at the time of the action," he said..

The European Union Trade Mark Directive provides a non-exhaustive list of what can act as a trade mark, including words, logos and shapes--essentially anything is a sign.

In the Libertel case, the ECJ confirmed that, theoretically, a single colour is registerable but, apart from in exceptional cases, only where the mark has become distinctive through use.

What this means in practice is that evidence will need to be adduced showing that the public recognise that colour as coming from that particular brand owner for particular goods.  And this would appear to be an evidential hurdle that would need to be overcome by Orange in its action against easyMobile.

The Libertel also clarified that:

· The mark must be graphically represented in a way that's clear, precise, self-contained, equally accessible, intelligible, durable and objective.
· The colour not only needs to be reproduced on paper, but must also indicate a recognised identification code (such as the Pantone system).
· There is public interest in allowing other traders to use identical colours for the same goods or services. This must be balanced against the brand owner's interest in seeking registration.

Although the Libertel case concerned the issue of single colour trade marks, another decision by the ECJ in 2004 considered the issue of the registration of a combination of colours 'without form or contours'.

The Heidelberger case (ECJ, 2004)

In March 1995, Heidelberger Bauchemie GmbH applied to the German Patent Office for the registration of the colours blue and yellow as a trade mark. The section of the application form headed 'reproduction of the mark' comprised a rectangular piece of paper, the upper part of which was blue and the lower half yellow.

Registration of the mark was applied for in relation to a list of various products used in the building trade, including adhesives, solvents, varnishes, paints, lubricants and insulating materials.

In 2004, the ECJ ruled that a combination of colours is also theoretically acceptable for registration provided that the combination of colours is 'systematically arranged by associating the colours concerned in a predetermined and uniform way'.

What can marketers learn from these cases and the easyMobile saga?

· It's essential to conduct clearance searches for new trademark applications and brands as there's a risk of a brand owner having already registered a particular colour or brand get-up.

· A trademark application can't be changed once filed. It must therefore be defined correctly at the time of the initial application.

· Concurrent trademark applications should be considered.  Tactically, a widely defined trademark application could be filed to achieve a greater monopoly and to get ahead of your competitors.

· At the same time, it probably makes sense to make narrower, back-up ones in case the first fails.

Ardi Kolah is the author of Essential Law for Marketers (Butterworth Heinemann, £25) and is a marketing, public relations and sponsorship consultant.

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