Colour combination trademarks under scrutiny
A Hungarian pharmaceutical company filed a trademark application for a colour/figurative use of the word ‘MultiKid’ with a list of goods, including in class 5 for pharmaceutical and veterinary products, therapeutic use of healthcare products, therapeutic use of dietary preparations, baby food, plasters, bandage materials, lead materials for dental use, dental modelling materials, disinfectants, preparations for killing pestiferous animals and plants, fungicides and herbicides.
In the word combination, ‘Multi’ was printed in yellow and ‘Kid’ in orange, using a wide letter typeface. A foreign owner of an earlier international trademark for the expression ‘MultiBic’ filed an opposition against the subject application.
The list of goods of the opponent included in class 5, pharmaceutical preparations and healthcare products for medical use except for products including vitamins, minerals and/or microelements. The prior trademark was black and white, with narrow letters.
The case was decided first by the Hungarian Patent Office in favour of the opponent. The applicant filed an appeal to the Metropolitan Court, which upheld the patent office’s decision. The applicant filed a further appeal against this decision to the Metropolitan Appeal Court, which is the final tribunal.
It also upheld the decision of the first instance court. In the dispute between the parties and in the corresponding decisions, the visual, phonetic and conceptual similarities between the applicant’s and opponent’s trademarks were examined, and the identity and similarity between the list of goods was also examined in detail.
The case has a number of interesting aspects, most notably, the interpretation of a black and white illustration in comparison with a particular specific colour combination. The first instance court pointed out in the portion of its decision that dealt with the visual similarities/differences between the two trademarks, that:
“In the present case the figurative elements of the two designations are not dominant, the spot around the words has the role of a background that contributes to enhance the word itself. Therefore the word elements constitute the dominant portion of the designations, and the average consumer will therefore notice and remember on the MultiKid word element.
The court finds it important to emphasize that in the designation of the applicant the yellow and orange colours are dominant, while the trademark of the opponent is black and white, which results in that the opponent can use it in any colour, even in yellow, and in that case the difference in colour cannot create distinctiveness.”
"The scope of protection of a black and white illustration of a trademark covers all possible colours and colour combinations of the same illustration."
On appeal, the applicant argued against this part of the decision and requested the Appeal Court to deal specifically with the allegedly broad interpretation of the black and white illustration, since according to the applicant’s interpretation, the use of the specific yellow-orange colour combination constitutes a striking visual distinction from the simple black and white mode of illustration in the opponent’s trademark.
The Appeal Court repeated that in the given case, the word elements are dominant, as the figurative portions have no special distinguishing character, but merely illustrate the word in different forms of letters. Concerning the scope of a black and white illustration, the Appeal Court upheld the position of the first instance court and added:
“It has become a standard court practice that the scope of protection of a trademark registered as a non-colour illustration provides a protection to the owner of the trademark in connection with any possible colour just as a consequence of the lack of determination of any colour against any non-authorised use.Therefore, the applicant has argued without any sound basis the corresponding part of the decision of the first instance court.”
In summary, the scope of protection of a black and white illustration of a trademark covers all possible colours and colour combinations of the same illustration.
Michael Lantos is managing partner and Hungarian and European patent attorney at Danubia Patent and Law Office LLC. He can be contacted at: lantos@danubia.hu
