A trademark for the purposes of distinctiveness could be registered with a limitation to a specific colour and used for that colour only. The relevant colour would usually be the exact colour the trademark proprietor uses or proposes to use the trademark in the course of business. However, for a wider protection of a trademark in all colours, trademarks are most times filed and registered without any limitation to colour. Intellectual Property (IP) Practitioners have over the years confused this assertion with the principle that a trademark filed and registered in black and white is deemed to be registered and protected in all colours while a trademark filed in colour is deemed to be registered and protected in that colour alone. We have hereinbelow analysed this age-long principle in juxtaposition with the relevant laws.
Section 16 of the Trade Marks Act (the Act) provides:
A trademark may be limited in whole or in part to one or more specified colours, and in any such case the fact that it is so limited shall be taken into consideration by any tribunal having to decide on the distinctive character of the trademark.
If and so far as a trademark is registered without limitation of colour, it shall be taken to be registered for all colours.
Several authors and IP practitioners have interpreted this provision to mean that trademarks filed and registered in black and white are deemed to be registered in all colours since there was no specific colour for which the trademark was filed.
It is our contention that this base interpretation to the provision of section 16 of the Act is incongruous and flawed. We have hereinbelow discussed this provision and have attempted a definite interpretation to the afore-stated provision in the light of judicial precedents and juxtaposition with the provisions of the UK Trade Marks Act.
In the Nigerian case of Patterson Zochonis & Co. Ltd. v. A.B. Chami & Co. Ltd. [1917 – 1976] 1 I.P.L.R, ostensibly the only Nigerian case that commented on registration of trademarks with limitation to colour, the facts are straightforward. The Appellants were the registered proprietors of a trademark in class 48 (Old goods specification) in respect of perfumery (including toilet articles, preparation for the teeth and hair, and perfumed soap) registered for 14 years from February 2nd, 1960. The trade mark is of a device in a horizontal rectangle of an elephant using its trunk to pull fruit from a palm tree with a hill in the background. It has no name and no colour was registered. The Respondents on their part applied to register their trademark “Asirire” (meaning “evening” in Hausa language) in the same class 48 in respect of perfumery. The trademark is a vertical rectangle with an elephant in the background amongst other features. The Appellants objected to the registration on the ground that there is a likelihood of deception or confusion if the Applicant’s device was allowed to be registered. The trial Court rejected the objection and ordered the registration of the latter mark with costs. The Supreme Court upheld the decision of the High Court allowing the registration of the Respondent’s trademark. In arriving at the said decision, the Supreme Court held:
The learned trial Judge, however, immediately before the passage in his judgment which he already quoted stated, quite correctly in our view, the principle to be applied when he said (1968) 2 A.L.R. at 74 –
“the principle is well-established that Trade Marks which were not likely to deceive literates or educated persons but could deceive illiterate Nigeria should be excluded from registration”
We must apply that principle to the facts of this case. We bear in mind the words of Brett L. J. (as he then was) in the case in Re Worthington & Co.’s Trade Mark (1880) 14 Ch. D. 8 where he said at 15 -16:
Therefore it seems to me that the proper construction is that where a trademark is registered, it is not merely the outline or Design as printed in the advertisement in black, or black and white, which is to be protected, but that which is to protected is the trademark as it may be used or will be used in the ordinary course of trade, that is, in any colour. That being so, it seems to me that the proper test is this: assume both trademarks to be registered, and let it be supposed that each person registering is ignorant of the other’s trademark would any fair use of the second be calculated to deceive? I quite agree that we ought not to take into consideration an obliteration or a fraudulent alteration of the second design. The question is whether any fair use of the second would be calculated to deceive. Now, if the first may be used in any colour, and, supposing the parties to be ignorant of each other’s marks, they might both with a perfectly fair intention use them of the same colour….
The editors of the Intellectual Property Law Reports in their editors note summarized the above dictum of the Supreme Court in the following words: “A registered owner whose mark is registered without limitation of colour may use the trademark in any colour.” Thus, the implication of registration of a mark without colour limitation is that such a mark would be taken to have been registered for all colours.
Several authors have misinterpreted section 16 of the Act as well as the decision in the above case to mean that a trademark registered plainly in black and white is deemed registered for all colours while a trademark registered in colour (other than black and white) is deemed registered solely for such colour(s) and the protection of the trademark is limited to that colour.
The key word in section 16 of the Act is “limitation”. Thus, for the protection of a trademark to be limited in a particular colour, the proprietor must have, at the time of filing the trademark application, made a colour endorsement or stated it expressly that the trademark claims the specified colours for which it is to be registered. Therefore, where there is no colour endorsement or claim, the trademark will be deemed to be registered for all colours notwithstanding the colour for which it was filed. An illustration will suffice. If ABC Company files its trademark in yellow and claims a colour endorsement for the yellow colour, the trademark will be registered and protected in that yellow colour, especially in considering the distinctiveness of the trademark. However where ABC company files its trademark in yellow and does not limit the registration to the yellow colour or claim any colour endorsement, the trademark in yellow will be deemed to be registered in all colours. On the other hand, if a trademark is filed in black and white, and a colour endorsement for the black and white colours are inserted, the trademark will be deemed registered and protected in black and white alone.
When filing a trademark in colour in the United States through the United States Patent and Trademark Office (USPTO), the colour claim will be automatic if the image of the trademark is in colour. If colour is not to be claimed for the trademark, this will have to be stated at the moment of filing and the image of the trademark must be in black and white or in scales of grey. So the position under the United States is different from what is obtainable in Nigeria. A similar position exists in China and the European Union. In Canada, colour claims are not automatic for trademarks filed in colour, the applicant has to specifically express that he claims the colour of the trademark. This is also the position in Taiwan and some other jurisdictions.
Section 16 of the UK Trade Marks Act 1938 provided as follows:
16. A trade mark may be limited in whole or in part to one or more specified colours, and in any such case the fact that it is so limited shall be taken into consideration by any tribunal having to decide on the distinctive character of the trade mark.
If and so far as a trademark is registered without limitation of colour, it shall be deemed to be registered for all colours.
The authors of Kerly’s Law of Trade Marks and Trade Names interpreted this provision, in page 203 of the book, in the following words:
Under section 16 a trade mark may be registered with a limitation as to the whole or part to one or more specified colours; and in cases where that is done colour may be taken into consideration for the purpose of distinctiveness. This being so, if a registration without colour were successfully challenged, but the trade mark would be unobjectionable if confined to the colours in which it was used, it is probable that the court would exercise its discretion by imposing a limitation to those colours instead of removing the mark from the register.
This interpretation reinforces our initial submission that the functional word is “Limitation”. Thus, for a trademark to be registered and protected in a particular colour, there must be a statement to that effect at the time of filing. The registration certificate should also state the fact that the registered trademark claims that particular colour or that the trademark is registered for the said colour.
In the case discussed above, P.Z. Co. Ltd. V. A.B. Chami & Co. Ltd. (supra), it was canvassed and impliedly agreed to by the court, that a trademark registered with a colour limitation must have that fact mentioned in the register, certificate or in the application to register.
In conclusion, the position as argued by some practitioners that for a trademark to be registered, used and protected in all colours such a trademark must be filed and registered in black and white is an incorrect construal of the law. A trademark filed in any colour without a limitation to that colour is deemed to be registered and protected in all colours.
The present reality however is that the Nigerian Trademarks Registry has continuously failed or neglected to insert the colour claims and colour endorsements on registration certificates for registered marks. These colour claims/endorsements are most times also missing in the Register. The question begging the answer, arising from this omission, now becomes, how does a registered proprietor prove that his trademark was filed and registered with a colour limitation in the absence of such endorsement on the registration certificate? The trademark application acknowledgment form which is usually issued immediately upon filing a trademark, for online applications, and few days after filing an application, for manual applications, usually contains the colour claims/endorsement. Sometimes, the acceptance notices also contain these colour claims/endorsements. The colour claims typically start missing during the advertisement of the trademark in the trademarks journal and ultimately in the registration certificate. An acknowledgment form will serve as a proof that the trademark was filed with a limitation to colour but not a proof that it was registered with a limitation to colour.
Filing a trademark with limitation as to colour limits its use to that colour and this aids in proving the distinctiveness of the trademark; this however does not exclude the application of the “confusingly similarity” rule where a similar trademark is sought to be registered and is opposed or objected to.
About the Author:
Christian is a graduate of the University of Nigeria and Nigerian Law School Abuja. He was called to the Nigerian Bar in 2015. Christian is an Associate in the intellectual property law department of the top tier law firm, Aluko & Oyebode, where he has advised several multinational clients on the protection of their IP rights.