GUIDELINES FOR REGISTRA-TION OF COLOR COMBINA-TION MARK

03/01/2000

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Under the amendments to the Trademark Law which came into force on 1 November 1998, a mark comprising a combination of colors may be registered as a trademark, and receive legal pro-tection, if it is sufficiently distinctive to enable ordinary consumers to recognize it as identifying certain goods, and thereby distinguish them from those of other merchants. Accordingly, on 2 February 2000 the Intellectual Property Office (IPO) announced its Guidelines for Registration of Color Combination Trademarks and Service Marks. The main points are as follows:

A color combination trademark means one in which a combination of colors is the sole feature for which registration is sought. It does not include composite marks in which a com-bination of colors is associated with words, drawings or symbols.

A color combination trademark means one comprising two or more mutually distin-guishable colors used on all or part of a product or its packaging or container; it does not include single colors.

A color combination trademark must be dis-tinctive, i.e. it must be sufficient to enable or-dinary consumers to recognize it as identify-ing certain goods, and thereby distinguish such goods from the goods of other merchants.

In the application, broken lines should be used to indicate the shape and appearance of the actual product, packaging or container, with the colors to be used applied to the appropriate portion. A statement must be included that the shape of the product, packaging or container does not form part of the trademark.

The application must also include a detailed explanation describing how the color combi-nation trademark is to be displayed in practice on designated products or their packaging or containers (e.g. specific style, position and content) and the specific colors to be used (e.g. hue, gradation).

A color combination trademark for use on goods in liquid or powder form may be regis-tered if it can be clearly distinguished from outside the packaging or container.

Where a color combination trademark is to be used on two or more types of goods of the same class, the following principles apply:

1.where the form of use is the same, the applicant may describe such use with re-spect to one type of goods, and submit a single application; and

2.where the forms of use differ, separate applications should be made.

In any of the following circumstances, a color combination trademark will be deemed a de-scriptive trademark, and may not be regis-tered:

1.where the color combination results naturally from the manufacturing process applied to the goods;

2.where it is necessarily or usually adopted for economic reasons; and

3.where it is necessary to the functioning of the goods.

The rules for color combination trademark apply mutatis mutandis to color combination service mark.