News Trademarks, Domain Names, Copyright 2008

Single color trademark registration granted by Italian PTO

On February 11, 2008, the Italian Patent and Trademark Office granted registration (no. 1093526) for a colour trademark consisting exclusively of the chromatic tone represented by Pantone® code 3005 (blue), which was filed by our Office on 12/03/2004 (application no. RM2004C001301) on behalf of Printing Research Inc.

The examination carried out by the Italian PTO would appear to have given due consideration to the relevant Case Law of the Court of Justice which, in Decision C-104/01 (Libertel case) held that “in the case of a colour per se, distinctiveness without any prior use is inconceivable save in exceptional circumstances, and particularly where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific”.

In the present case, the application concerned a trademark consisting of a specific colour which was described using an internationally recognized colour code wherein protection was claimed exclusively for “printing press equipment namely jacket coverings for printing press transfer and delivery cylinders” in class 7.

In application of the aforementioned Caselaw, therefore, the Italian PTO, in the humble opinion of the author, correctly held that the application should be granted.

It is worth noting that the corresponding Community trademark application, filed with OHIM (application no. 3370921 of September 22, 2003) was refused by the Office, it being held to be devoid of distinctive capacity.

It remains to be seen to what extent the holders of a trademark registration for a single color will be able to enforce their registration before the national courts and whether the likelihood of confusion will be evaluated more severely, with respect to “traditional” trademarks.

go back to News > Trademarks, Domain Names, Copyright
go back to News Main Index