by Alonso Camargo
MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, NOVEMBER 2003
According with the Mexican Industrial Property Law (IPL), a single colour may not constitute a trade mark, thus resulting in an absolute ground for refusal. Indeed, section V of article 90 establishes that the following are not allowed to be registered as trade marks: “Ietters, digits or isolated colours, unless they are combined or enclosed with other elements such as signs, designs or words wich provide them a distinctive character”.
The reason supporting the absolute prohibition on registration of a single colour is based on the fact that the number of colours is quite limited, and the exclusive right conferred to a single person over an isolated colour would have a very aggressive impact in commerce, if such person becomes entitled to prevent the use of a colour by its competitors. By single colour the IPL does not mean a single colour from the spectrum, but also a single shade of colour.
However, the distinctive signs consisting of single colours are becoming a relatively new phenomenon, and some countries and legal systems have allowed registration of isolated colours under a special circumstance – acquired distinctiveness. This is the case of the European Union, in which the Office for Harmonization in the Internal Market (OHIM) has granted registration for a Community Trade mark consisting of the colour lilac, for chocolate confectionery. The criteria prevailing for allowing its registration were that the applicant submitted extensive evidence proving that the colour acquired distinctiveness as a trade mark through its use. This criteria is duly supported in the article 7.3 of the Community Trade Mark Regulations.
Unfortunately, the Mexican IPL does not retrieve the secondary meaning theory; thus, registration of isolated colours is not possible at present, although it is indubitable that some single colours have had acquired distinctiveness with respect to certain products in the market.
Nevertheless, it is somehow justified that a single colour should not be temporary monopolized, and this is the reason why some legal systems are very strict in allowing the claim for a single colour.
Source: Managing Intellectual Property Magazine, Nov 2003.