Colour marks gain popularity in Russia

Russian legislation allows for the registration of non-traditional marks, providing for the possibility of registering different types or combinations of designation in addition to common word, graphic and three-dimensional marks.

Distinctiveness

Regulations on drafting, filing and examining trademark applications define other designations in an exhaustive list comprising sound, light, motion, holographic, tactile, position, olfactory and taste designations, as well as designations consisting only of a single colour or several colours. However, marks which lack distinctiveness are not eligible for registration. Although the legislation lists certain designations which should be recognised as lacking in distinctiveness, in some cases this criterion is not definitive and remains at the discretion of the Russia Patent and Trademark Office (Rospatent). Further, the law provides for the possibility of registering marks based on acquired distinctiveness.

Growing popularity of colour marks

Other types of non-traditional and colour trademark have begun to grow in popularity in Russia in recent years. This growing interest in respect of colour marks is confirmed by the increasing number of such trademark registrations filed both internationally through the Madrid system and nationally through a direct application to Rospatent. Recent publications in the media and a review of the publicly available trademark register demonstrate the increasing popularity of colour marks. According to Russian trademark practice, if there is a strong association between a colour, a particular enterprise and a specific product or service, the colour may be registrable. Examples of colour marks include Deutsche Telekom’s magenta colour, Deer & Company’s green and yellow colour combination and Sberbank’s green colour, among others. The criterion for such registration is that the colour in question is capable of sufficiently distinguishing the product or service and its origin (ie, the colour must be associated with the product itself and the producer of the relevant goods).

Application for colour

A trademark application consisting of a single colour or colour combination can be registered if it has acquired distinctiveness and provided that the applicant can prove that the subject colour or colour combination functions as its trademark. The colour or colour combination should have been used in Russia before the application filing date.

Where a designation is claimed that consists of a combination of colours or a single colour only, for which the latter, in the applicant’s opinion, has acquired distinctiveness as a result of its use, a colour sample should be provided in the application and the statement “mark consisting exclusively of one or more colours” will be issued. Indication of a colour in the application or a description of the claimed designation will be accompanied by a corresponding code from an internationally accepted colour-identification system selected by the applicant (eg, guidelines and catalogues of colour samples issued by specialised associations or catalogues of colour samples used by software graphic editors).

Evidence of distinctiveness

Colours may be legally protected as trademarks if they have acquired distinctiveness as a result of their use. Such use should be evidenced by respective materials, which may include:

• contracts and agreements proving significant volumes of production and sale of the goods or services;
• territorial coverage of any sales as the duration of use of the claimed designation;
• materials used for advertising campaigns (eg, media publications, television advertising and references found in literature and cinema); and
• opinion polls in which the emphasis is placed on the acquisition of the distinctive ability of the claimed colour in relation to a specific list of the goods or services produced by the applicant (ie, the question is formulated in such a way as to prove the strong associative connection of a colour mark with a specific list of the goods or services of a certain manufacturer. The sociological survey should be conducted among 1,500 consumers of the goods for which registration of a colour designation has been sought).

If the submitted evidence confirms that the claimed designation was perceived by the consumer as a designation intended to individualise the goods of a certain manufacturer before the filing date of the application, the colour may be granted legal protection as a trademark.

In practice, the list of documents may be wider and depends on the specific situation. For example, the following documents may be considered by the examiner as proof of the acquisition of distinctiveness by the colour designation:

• actual data on the duration and intensity of use of the designation, as well as the territory of the sale of services, accompanied by the claimed colour designation;
• the use of the claimed colour by the company (eg, photographs of the design of the company's offices, product packaging and staff uniforms);
• the intensity of use in advertising (eg, company advertising materials, media publications, the amount of advertising expenses, the duration and intensity of advertising of the goods and sponsorship costs);
• information about the fact that the company is the market leader for these goods (eg, indicating the company's market share) and the results of market research;
• the number of offices or representative offices of the company in Russia, drawn up and using the claimed designation (colours);
• a list of registrations of the company’s trademarks in Russia using the claimed colour;
• information on participation in international forums and exhibitions with the design of the company's stands using the claimed colour; and
• materials confirming the company’s use of the claimed colour in the company’s corporate style.

Materials relating to the acquisition of distinctiveness by the claimed designation should be submitted for each specific position indicated in the list of the claimed goods or services. The minimum period of use of the claimed colour designation, which is necessary for proving the acquisition of distinctiveness, is not established by law.

Petrovsknefteprodukt and Shell – red and yellow colour combination

There is practically no judicial practice on disputes in respect of the defence of colour trademarks. However, in August 2017 the court delivered a judgment regarding protecting the red and yellow colour combination belonging to the famous international oil and gas company Shell. Shell’s corporate colours are protected by the international registration in many jurisdictions, including Russia. The Russian company Petrovsknefteprodukt LLC used the same colour scheme in its activities. Shell considered such use unlawful and applied to the court. Shell demanded that Petrovsknefteprodukt stop using its colour trademarks and designations, which are confusingly similar to Shell’s, at its petrol stations. Shell asked the court to force the respondent to remove existing signage in the controversial design from petrol stations, adding that it was necessary to set a 10-day deadline for the voluntary execution of such a decision. For each day of delay, Shell demanded the recovery of Rb100,000 (approximately $1,500) from the respondent. Shell’s main argument was that its trademark (a combination of yellow and red colours in the form of two yellow stripes and one red stripe) had been registered in the international registry of marks since the late 1990s and the respondent uses a similar design at its petrol stations.

In response, Petrovsknefteprodukt stated that there was a considerable distance between any of its petrol stations and those of the plaintiff. In addition, a number of Shell’s petrol stations use a different colour scheme and some carry the graphical trademark representing a picture of a shell. Petrovsknefteprodukt argued that the trademarks of the plaintiff and the respondent create a different impression on the consumer. Despite the above arguments, the court ruled in Shell’s favour.

The court noted that the design of the controversial petrol stations was not entirely identical to Shell’s trademarks. It acknowledged that the respondent used the same colour scheme at its petrol stations as Shell and especially emphasised that in this case it was unnecessary to appoint a special expert examination, since the court could decide a contentious issue from the position of an ordinary consumer. The court ordered the removal of all designations resembling the Shell design from Petrovsknefteprodukt petrol stations. Given the resource-intensive nature of such necessary alterations, the court gave the respondent 45 days to implement the decision after its entry into effect. The court also reduced the penalty for each day of delay to Rb10,000 (approximately $150) per day, given Petrovsknefteprodukt’s small profits.

As a result, the Russian arbitration court recognised the violation of colour trademarks. A crucial role in this dispute was played by duly registered trademarks. If there had been no registrations in Russia, Shell would have needed to apply to the Federal Anti-monopoly Service with a request to recognise the respondent’s actions as unfair competition.

At the same time, Petrovsknefteprodukt attempted to attack the Shell trademarks, having filed invalidation actions with the request to recognise the marks. The applicant questioned the legality of the provision of legal protection for the specified trademarks, stating that the combination of colours has no distinctive character. Petrovsknefteprodukt pointed out that the number of Shell petrol stations in Russia is less than 1% of all petrol stations located in Russia. Moreover, the colours used in the design of Shell’s petrol stations are also used by other competitors, therefore the rights holder cannot state that its trademarks are unique.

In the rights holder’s opinion, the applicant’s arguments did not reflect reality:

• The Agreement on Trade-Related Aspects of Intellectual Property Rights expressly provides for the possibility of registering a colour combination as a trademark and confirms that such combinations have distinctiveness in principle.
• The recognisability of a designation by consumers in Russia is connected not only with the large-scale use of the designation in Russia, but also with the use of the disputed trademark worldwide. From the submitted documents it follows that the red and yellow colour combination has been Shell's trademark since 1915 and is known in Russia due to the duration of its use (the first Shell petrol station opened in Russia in 1998). The same colours are registered as trademarks of the rights holder in a number of foreign countries.
• Shell invests a lot of money in brand promotion, thanks to which it was possible to increase awareness of the colour combination and the trademark as a whole. This fact is confirmed by studies, in particular a sociological survey, the results of which suggested that the contested trademark is known to 65% of consumers living in Russia. According to retrospective sociological research, as of the priority date (1996) the trademark was known to a significant proportion of consumers aged 40 years and older.

The Board of the Chamber of Patent Disputes concluded that the trademarks are sufficiently distinctive, as confirmed by the results of sociological surveys (including their retrospective indicators) and other materials of the case. A stable associative perception of the trademark ownership to this rights holder was demonstrated by a high percentage of consumers. This took into account the circumstances prevailing on the date of the objection, since the objection was filed 21 years after the priority date.

According to the results of the proceedings, the invalidation actions were denied and the trademarks left in force.

Comment

The Shell case is a notable example of effective colour trademark enforcement. Obviously, a colour trademark helps to strengthen the competitive position of the trademark owner on the marketplace. But the requirement as to the distinctiveness of a mark should be always taken into consideration while adopting it. Trademark owners must understand that their non-traditional trademarks, including colour marks, may have a certain vulnerability and could be attacked by a competing party based on lack of distinctiveness or non-use. The defence of such marks may be connected with certain difficulties and extra expense (eg, for the collection of evidence or obtaining opinion poll results). As in the Shell case, these challenges were successfully overcome by the trademark owner.