Mason Sier Turnbull on franchises registering trademarks

According to Mason Sier Turnbull , Franchisors that have built strong brands and successfully differentiated themselves from their competitors usually understand the role that colour can play in achieving marketplace visibility and customer recognition. However, what many probably do not know is that the Trade Marks Act 1995 specifically provides for registration of colours as trademarks.

Trademarks act as a badge of origin to distinguish the goods and services of one trader from another. Each mark – be it a colour, a name or a symbol – can be registered for a specific category of goods or services. Hence, registering the colour blue as a trademark for, say, power tools will not prevent people from using or registering it for office products. However, it will help to prevent its registration and use by direct competitors.

Among the market leaders that have gone down the registration path is BP, which has registered green in relation to petrol stations, and Veuve Clicquot, which has registered orange in relation to champagne.

Historically, individual colours were difficult to register because companies had trouble establishing that the colours were capable of distinguishing their goods and services from those of other traders. BP, for example, went to considerable lengths to successfully argue that it had used green in its corporate livery for so long that the colour green had acquired a distinctiveness (i.e. that consumers had come to associate the colour with BP service stations). This and other registrations show that, although a colour, unsupported by anything else, might not distinguish products and services, its long-term use as a registered or unregistered trademark has meant that it had subsequently acquired that distinctiveness.

Generally speaking, registering a colour as a trademark is difficult if the colours have a descriptive aspect to them or if there is a competitive need for all traders in a particular trade to be able to use that colour. Accordingly, a company that sells oranges, for example, is unlikely to be granted a trademark for the colour orange. In this case, the colour is descriptive of the product and all orange traders would expect to be able to use the colour to promote their brand names.

Similarly, a company could not register the colour red for its fire extinguishers because the colour has a functional use. Fire extinguishers generally need to be red so that people can recognise them, especially in emergencies. Imagine the confusion if manufacturers had to sell their extinguishers in different colours because one manufacturer managed to register the colour red!

In comparison to single colours, colour combinations are comparatively easier to register (again, as long as there are not functional or descriptive aspects to the combination, or there is an obvious need by the trade for its use).

This is a major plus for franchisors that operate in an industry where competition for customer loyalty is fierce and look-alike store fronts and corporate livery can be key differentiators.

Any franchisor that has built – or is considering building – a strong brand based on distinctive colour schemes should investigate having those colours protected by registering them as trademarks. A registered trademark right is much easier to prosecute than one which has not been registered.

For those whose franchising operations have gone or intend going beyond Australian borders, an international application scheme offers a central application point for making trademark applications in applicable convention countries, such as the US, UK and the EU.

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