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31 March 2020
German power tool manufacturer Stihl defended its orange and grey colour combination against a Chinese manufacturer
of saw products. (Photo courtesy of Stihl.)
In a lengthy effort stretching from 2014 to 2019, Wanhuida Intellectual Property successfully assisted Andreas Sthil AG & Co., KG, the German manufacturer of chainsaws and other power tools, in enforcing its orange and grey colour combination. Stihl registered a trademark for a combination of colours; in that the case of the saw, a combination of colours with orange in the upper part and grey in the lower part. The word mark “STIHL” is also used on the chainsaw.
A Chinese company which also manufactures saw products used a similar colour pattern and the “EMAS” trademark on its saw product.
Stihl sued the Chinese company for infringing its trademark rights of the combination of colours. Although the Chinese company argued that their usage of the orange and grey colours was just a kind of packaging and that their actual trademark is “EMAS,” the court of the first instance ruled that the Chinese company infringed Stihl’s trademark right. The defendant appealed to the Guangzhou IP Court, which affirmed the verdict in favor of the German company.
“We firstly had the local court support our claim of colour trade dress against competitors in a key civil lawsuit, and then persuaded various courts to support our claim of colour trademark infringement after it was registered by China’s trademark office as a valid colour combination trademark in China in August 2015,” said Mingming Yang, a partner at Wanhuida Intellectual Property in Beijing. “We have obtained over 10 civil judgments on colour combination trademark infringement in China for Stihl, which was a very unique experience.”
There have been hundreds of judgments on so-called “colour trademarks,” such as the decisions in Beijing supporting John Deere’s claim of infringement of its colour combination trademark for protection the “green chassis, yellow tyres” tractor in 2013, and in Guangdong province supporting a famous Chinese battery brand owner’s claim of trade dress unfair competition against a competitor in 2014. The latest version of the trademark law provides in Article 8 that “any mark, consisting of words, devices, letters, numbers, three-dimensional marks, combined colours, sounds, etc, or the combination of said factors, that can distinguish the goods of a natural person, legal person or other organization from those goods of others, can be applied as a trademark for registration.”
“Colour combinations have been registrable as trademarks from 2001,” said Yang. “Such amendments aim to protect the interest of the market participants, which successfully established the fixed connection between the colour combination and their products, and to stop possible confusion in the market, which would be beneficial to consumers.”
This view is supported by Jason Gong, a partner at East & Concord Partners in Beijing, who said that since the 2001 reversion of trademark law came into effect on December 1, 2001, a combination of colours can be used and registered as a trademark.
“However, this kind of application has been usually refused on the grounds that the trademarks as such lack distinctiveness and fail to identify the applicant as the definitive source of the product by the relevant public,” said Gong. “As a result, few colour combination trademarks are actually registered.”
Yang added: “It is still very difficult to obtain the registration of a colour combination trademark in China. The brand owner has to provide plenty of evidence to prove the ‘secondary meaning’ acquired through extensive use and advertising. The National Intellectual Property Administration (CNIPA) and the courts are very cautious about granting registration of colour combination marks. Some examiners still hold the view that Chinese consumers normally would not deem the colour combination as an identifier for the origin of goods. According to our experiences, if the registrant of a colour combination trademark can engage a competent agency to represent it in courts in enforcing its colour combination trademark, most probably the courts will support the claim. But administrative enforcement agencies have very little knowledge on this kind of non-traditional trademark, and are very cautious in conducting raid actions or granting customs interception of the alleged infringement goods. And so far, the police and the courts do not conceive of infringement of colour trademarks as a crime.”
To make sure that no company or individual copies a colour combination, Yang said that when adopting colours that are identical or similar to the leaders in the industry, companies and individuals may need to check whether the colour combination has been registered as a trademark.
“When the colour combination is registered as a trademark, it means CNIPA was convinced that such colour combination can widely be viewed as the identifier of a specific origin of goods by the relevant public,” Yang said. “To prevent the confusion in the market and protect the interest of consumers, other companies and individuals may have the liability to avoid adopting the same or similar colours.”
Will this be a trend for other Asian countries in the near future?
“In my opinion, trademarking colours might be a trend in the future,” said Gong. “The laws should strike a balance between protection of existing commercial reputation and at the same time leave sufficient openness for newcomers in business.”
It can be recalled that colour combinations have been registrable as trademarks since China’s trademark law was amended in 2001. But the single colour mark still cannot be accepted for registration in China so far. Before the 2001 revision of trademark law, trademarking a combination of colours was not expressly excluded.
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