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Should I Protect My Business Colours With a Trade Mark NZ?

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When you think of famous brands like Coca-Cola, McDonald’s and Starbucks, the first thing that comes to mind is their distinct brand colours. The colour schemes of these brands are iconic. You do not need to see their logo to recognise them. If your New Zealand business has distinct brand colours, you may wish to register your colours as a trade mark. This article will discuss whether you should trademark your business’s brand colours. 

What is a Colour Trade Mark?

A colour trade mark is a specific type of trade mark. This type of trade mark protects a particular colour or combination of colours that are used regarding goods and services. For example, Cadbury’s distinctive purple has been registered as a colour trade mark. This trade mark applies to Cadbury’s confectionery goods. As such, if another confectionery company attempted to use Cadbury’s trademarked shade of purple, this would constitute trade mark infringement. 

Benefits of Registering a Colour Trade Mark 

There are several benefits to registering a colour trade mark for your business:

1. Enforceability 

When you register a colour trade mark, you have exclusive rights to the use of that colour or combination of colours. As such, other businesses cannot use your trademarked colour or a similar colour. If another business does use your trademarked colour without your permission, you may commence legal action against them. Depending on whether you have suffered any losses due to your competitor’s trade mark infringement, you may claim damages. 

2. Increased Brand Recognition

A distinctive colour scheme can help your business stand out from competitors and create brand recognition. When you register your colour trade mark, you have the exclusive right to use that colour or combination of colours. Notably, this only applies in relation to your goods or services. As such, your customers will begin to associate your business with a particular colour scheme. This can help build brand recognition with your customers over time. 

3. Asset Value

A colour trade mark can be a valuable asset for your business. If you decide to sell your business, your registered colour trade mark can be included as part of the sale. It can also be licensed to other businesses for a fee. This, in turn, provides an additional revenue stream for your business.

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How to Register a Colour Trade Mark in New Zealand 

The process to register a colour trade mark is the same as any other trade mark registration in New Zealand. However, you will find it can be significantly more difficult as you have to meet the requirements for registration. The key steps to trade mark registration are outlined below. 

1. Conduct a Trade Mark Search

Before you apply to register a colour trade mark, you need to ensure no one else has already registered a similar trade mark. This will help you to avoid any potential conflicts or opposition during the registration process.

2. Prepare and File Your Application 

At this stage, you should have conducted your trade mark search and confirmed a similar trade mark does not exist. Once your search is complete, you can prepare and file your trade mark application with the Intellectual Property Office of New Zealand (IPONZ). Your application should include a description of the colours you want to register. Additionally, your application should include a detailed explanation of how the colours will be used. This explanation should directly relate to your goods and services. 

3. Examination

Once your application has been filed, it will be examined by the IPONZ to ensure that it meets the requirements for registration. If there are any issues with your application, IPONZ will notify you and allow you to address them.

4. Publication and Opposition

If your application is accepted, it will be published in the New Zealand Trade Marks Journal for three months. During this time, other businesses can oppose your registration if they believe it conflicts with their trade mark rights.

5. Registration

If there is no opposition, your colour trade mark will be registered. You will receive a certificate of registration from IPONZ. Your trade mark will be protected for 10 years, after which you can renew it for unlimited additional 10-year periods.

Challenges When Registering a Colour Mark

1. Demonstrating Distinctiveness

Registering a trade mark for your business’s colours can be a complex and challenging process. You will find one of the main difficulties with registering a colour mark is demonstrating distinctiveness. To be eligible for registration, your business’s colours must be sufficiently distinctive. Your brand colours must be unique and not commonly used in your industry. Your colour mark will not be accepted for registration if it is too similar to existing colour trade marks. Likewise, your colour mark will not be accepted if your brand colours are too commonly used. 

2. Identifying Which Colours to Protect 

Another challenge with registering a mark for colours is defining the precise shade or combination of colours you wish to protect. Your application must include a detailed description of the colours you wish to register. When identifying the colours you wish to register, you need to use a recognised colour identification system. Examples of such systems include Pantone and RGB. This is to ensure that there is clarity and precision around the specific colours you wish to protect. In your application, your detailed description needs to be accompanied by a visual representation of the colours. This can be either in the form of a sample or digital image. 

3. Evidence of Use of Colours 

There is another challenge apart from demonstrating distinctiveness and defining the precise colours you wish to protect. You may also need to provide evidence of your use of the colours in relation to your goods and services. This evidence may be required to demonstrate the colours you wish to register have become associated with your brand. Further, this evidence is required to show you use these colours to distinguish your products or services from your competitors. Evidence of your use of the colours you wish to register as a trade mark can take many forms including: 

  • photographs; 
  • advertising materials; 
  • use of the colours in product packaging; 
  • use of the colours in employee uniforms; and 
  • other branding elements. 
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Trade Mark Essentials in New Zealand

Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.

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Key Takeaways

The process of registering a trade mark for colours can be complex and requires a significant investment of time and resources. However, you will find the benefits of protection can be significant, including:

  • enforceability against third parties using similar colour schemes;
  • increased brand recognition; and
  • providing your business with a valuable asset.

If you need help understanding whether you can trade mark your business colours, contact our experienced trade mark lawyers as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.

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