In 2012 a Court of Appeal in Oslo had the opportunity to rule in an infringement case regarding the use of a combination of three colours. Kraft Foods had the rights to the red, yellow and green stripes colouring its packaging of Norway’s most popular chocolate bars. It was upset that the well known Norwegian book publisher, Juritzen Forlag, had chosen a similar colour combination for its book covers and meant the use unfairly encroached on its well reputed mark. The publisher had printed and circulated two versions of the covers, in the first one the colours were highly similar to the chocolate packaging, in the latter the colours had a darker tonality and the cover presented other differences too.
The Court found that the first version was infringing but disagreed in respect of the later version which at the time of the ruling was the only one being sold.
Single colours are also signs capable of constituting trademarks and thus of being registered as such under Norwegian trademark law. There is in this respect no difference between the Act and the EU’s Trademark Directive.
The requirements as for all other signs is that they are capable of distinguishing the applicant’s goods and services from those of others, i.e., that the sign has distinctiveness.
Applicants wishing to obtain protection for single colours, however, should invest their time and economic resources in other measures to promote their brands rather than trademark applications.
In the past fifteen years all but one of 10 single colour trademark applications have been rejected by Norwegian trademark registration authorities (the Norwegian Industrial Property Office, better known as NIPO). In only one instance in 2005 NIPO registered the Pantone colour «Warm Red C» for «cigarette paper packs».
The lucky owner is the English tobacco manufacturer John Player & Sons Ltd, a company which was later acquired by Imperial Tobacco Group. Many other tobacco producers use however very similar red colours in their packets, such as the iconic red colour of Lucky Strikes, owned by British American Tobacco, and presumably have little to fear in respect of John Player’s registration.
There is currently one colour trademark application undergoing scrutiny by NIPO’s examiners. The applicant is none other than Glaxo Group Limited. The company is looking to register the colour purple for asthma inhalators.
Glaxo Group has already lost a battle in Norway courts over this colour. Its Norwegian daughter company GlaxoSmithKline AS was not able to prevent Novartis’s generic group Sandoz from using, marketing and selling asthma inhalators in purple. The two pharmaceutical companies are quarreling over the same issues in a broad number of jurisdictions.
In the ruling, which is not final, the Oslo Court affirmed, that «a colour per se has not inherent distinctiveness». It found however that GSK’s purple had acquired distinctiveness through massive use. It concluded eventually that the purple used by GSK was not similar to the purple used by Sandoz.
The colours of the products in question were:
The case law in the Scandinavian country cited indicates that colour trademarks have a rather limited sphere of protection against similar colour trademarks.
About Codex Advokat
For more information, see www.codex.no
Codex Advokat has specialist attorneys in the fields of industrial property rights, unlawful competition, and copyrights. We regularly represent national and international clients within these fields in litigation, prosecution, oppositions, cancellation and revocation actions.