June 23, 2022 at 6:37 am
Marks consisting of only one colour can only exceptionally be protected as trade marks in Serbia, as the colour alone is not distinctive enough & not recognized by the average consumer as a trade mark.
Marks consisting of several colours can sometimes be considered distinctive, which is decided on case to case basis.
Clearly, the main concern here is ability to distinguish goods owned by different proprietors in the marketplace.
Distinctiveness can be inherent, or can be achieved over time with use.
When talking about pure colour trade marks, the distinctiveness can only be achieved through use.
This has to be proven as well as that the colour is not functional or generic in regards to the goods & services the mark is hoping to obtain protection for.
Burden of proof is on the owner, providing it at the time of the application or right after. The use has to be constant and serious, has to show place/s, time and scope of use.
If a wide enough part of the relevant public recognizes it as sign, it will be considered that the sign is distinctive.
The IPO will take into consideration – the quantity of sales, time the sign has been in use on the Serbian market, how much marketing it has & the degree the public is familiar with it (usually proven through market research).
If the suggested mark consist of a colour in a certain shape, as long as it is not a generic shape such as a circle or triangle, it should be registrable.
In practice this would mean that if Tiffany had just opened, it’s now iconic blue colour would not yet be distinctive and therefore not protectable, and neither would many others that we consider recognizable today.
Further, it means that companies using a colour they think is recognizable and differentiates their product on the market, should look into protecting it.