A Color Combination Trademark is a type of trademark that was newly added to the revised Trademark Law of the People's Republic of China in 2001. Now trademark authorities have special requirements for the registration application for this type of trademark. In recent years, the Trademark Office and the Trademark Review and Adjudication Board (TRAB) have reviewed many cases concerning color combination trademarks. After a continuous review of past practices, the examination standard for color combination trademarks has been gradually improved. In 2005, the Swedish Kapman AB refused to accept the rejection of review rendered by the TRAB of the State Administration for Industry and Commerce (SAIC) and instituted an administrative action in Beijing's No. 1 Intermediate People's Court. Because it was the first administrative case concerning the color combination trademark and it involved the relevant examination standard, the case invited widespread attention within this field. Through a discussion of this case, this paper tries to deal with several problems requiring special attention during the course of filing a registration application for a color combination trademark.

I. Formality Examination of Color Combination Trademark

Color combination trademarks refer to a kind of trademark that is constituted by two or more colors in certain proportions and in a certain sequences. In accordance with Part V of the Trademark Examination and Cognizance Standards jointly issued by the Trademark Office and the TRAB, "Applicants for the registration of color combination trademarks are required to make a statement in the application. If no such statement is made, even if the applicants submit a color combination pattern, the examination will not be conducted based on a color combination trademark registration. The applicants should submit a distinctive color pattern with chromatogram numbers." The reason why applicants are required to submit chromatogram numbers when applying for the registration of a color combination trademark is that people have different abilities when it comes to distinguishing colors and many colors are difficult to describe in words. If the type of color is not identified before filing the application, the administrative law enforcement agencies and judicial departments will find it difficult to determine what type of color they should protect in case of possible trademark infringements. If the applicants do not state that the trademark is a color combination trademark during registration, the administrative trademark authority will examine the trademark as an ordinary graphic trademark with designated color.

II. Substantive Examination of Color Combination Trademarks

1. Examination of the Distinctiveness of Trademarks

In accordance with the Trademark Law, for a color combination trademark to be approved for registration, like any other type of trademark, it must be distinguishable for customers to see the origin of the goods or services; that is, it should possess the distinctiveness of a trademark. However, when they cognize the color, consumers tend to see it as a decorative wrapping, and not as a trademark. Consequently, trademarks consisting of colors are not as distinctive as other trademarks. Further, it should be noted that in the Trademark Law of China, trademarks consisting of colors basically mean trademarks containing color combinations and not those consisting of a single color (which are also named "pure color trademarks"). At present, only a small number of countries and regions protect pure color trademarks like the United States, Germany, Taiwan China, Italy and Korea, etc. The aforementioned provision of the Trademark Law of China conforms to the minimum requirement of the provisions of Article 15 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). Therefore, if the applicant applies for registration of a pure color trademark, it is impossible to be approved in China.

In judging the distinctiveness of a color combination trademark, the goods or services on which the trademark is designated for use should be considered. If the color combination trademark only contains the color of the designated goods, the color of the package or the color commonly used or frequently used in the service place of the designated goods, the color combination trademark lacks distinctiveness. 

Picture 1 (The lower part in grey shadow does not belong to the trademark pattern)

Moreover, the number of colors combined also has a certain influence on the determination of distinctiveness. For instance, the Trademark Office of the European Community in its examination practices treats the combination of two colors, especially two primitive colors, as usually lacking distinctiveness. However, the applicant may submit evidence to prove that the trademark has acquired distinctiveness through long time use so that the trademark can be registered in the procedure for review after rejection. The Trademark Review and Adjudication Board of China adopted this above-mentioned approach in the case of the Swedish Kapman AB which applied for a color combination trademark. The basic facts of the case are as follows:

On January 8, 2002, the Swedish Kapman AB submitted an application for a color combination trademark (see Picture 1) registration designating the class 8 of goods relating to a saw blade (parts for manual tools) to the Trademark Office of China, and was rejected. The Trademark Office reasoned that the trademark pattern was too simple to be distinctive as a trademark. In accordance with the provisions of Article 11.1.3 and Article 28 of the Trademark Law of the People's Republic of China, the application was rejected. The Swedish Kapman AB was not satisfied with the rejection and thus applied for a review with the TRAB on September 13, 2002. This company alleged in the review that the applied for trademark consisted of a combination of two colors, which were carefully selected by the applicant and their chromatogram numbers, were respectively "RAL2001" and "RAL5001". These two colors were used first by the applicant on the saw blade goods. As a color combination trademark, the trademark application was not directly related to the color produced during the process of production, manufacturing and processing. It did not possess the function of directly indicating the designated goods, nor was the color commonly used on the designated goods. In purchasing and using this brand's products, consumers could tell by the color combination of the saw blade itself that the goods came from the applicant and did not have to carefully search for the word trademark. Therefore, the trademark applied for possessed the distinctiveness of a trademark. The TRAB maintained after its review that the trademark applied for was a color combination trademark consisting of two different colors. The TRAB determined that the form of the color combination in the trademark was too simple and too difficult to be distinguished as a trademark by ordinary consumers, and therefore, lacked the distinctiveness required of a trademark. They ruled that it fell into the class of marks that shall not be registered as trademarks indicated by Article 11.1.3 of the Trademark Law, and therefore the application was rejected.

Not satisfied with the adjudication, the Swedish Kapman AB brought an administrative action before the Beijing No. 1 Intermediate People's Court and sought to negate this administrative decision. The first-instance people's court conducted a trial, and confirmed the viewpoint of the TRAB. The first-instance judgment held that a color combination could be used as a form of trademark. However, for such a mark to gain registration, it should possess distinctiveness just like other marks. The trademark applied for in this case was a combination of orange and blue. The combination itself was too simple to indicate the source of the goods or services. At the same time, the plaintiff did not produce evidence in the administrative proceedings to show that the trademark applied for had acquired the feature of distinctiveness after use, and therefore, could not conclude that the trademark applied for had the required distinctiveness. The Swedish Kapman AB was not satisfied with the first-instance rulings and appealed to the Beijing Higher People's Court, and at present the case is under second-instance trial review. 

This case demonstrates that the Trademark Office, the TRAB and first-instance people's court agreed that the inherent distinctiveness of a color combination trademark constituted by two common colors is relatively weak. Therefore, when the applicant applies for registration of a color combination trademark consisting of two common colors, and the application is rejected by the Trademark Office on ground of lack of distinctiveness, the applicant should, in the procedure of review after rejection, try to provide evidence to prove that the trademark has acquired the requisite distinctiveness after long time use so that the trademark can be approved for registration in the review process. The time of actual use of the color combination trademark in China, how it is used, and the production, sale and advertisements of products with this trademark can all be used to judge whether the trademark possesses the necessary distinctiveness. Further, if the applicant can highlight colors as part of its trademark in advertisements, by stating, "Please remember this charming color", etc., it is easier to prove the distinctiveness of the trademark.   
 

Picture 2

Gillette's case involving its application for a color combination trademark adjudicated by the TRAB is a typical case concerning a color combination trademark acquiring the feature of distinctiveness through use. The basic facts of the case are as follows:

The U.S. Gillette Company applied for the registration of a color combination trademark on the class 9 for battery goods on December 12, 2001 with the Trademark Office of China (see Picture 2), which rejected the application on the grounds that "the trademark graph applied for merely directly reflects the form of the goods, and is not distinctive enough to be used as a trademark." The U.S. Gillette Company was not satisfied with the rejection rendered by the Trademark Office, and filed an application for review with the TRAB on September 25, 2002. The main argument of the applicant was that the combination of copper and black on the trademark applied for was the classic design used by the applicant in its batteries "DURACELL" and "Jin Bawang" ("金霸王"). The copper color accounts for one third of the whole battery while black accounts for two thirds. This color combination trademark has acquired high popularity through long time use and a great amount of advertising promotion in China.

The applicant submitted at the same time a great deal of evidentiary materials about the use of the trademark in advertisements. After review, the TRAB held that through long time use and promotion, the color combination of the trademark applied for had become the distinctive mark of the applicant's batteries and consumers could distinguish the goods produced by the applicant from others through the feature of its color combination. The TRAB held that the application for a trademark to be used as a color combination trademark on designated batteries fell within the provision of Article 11.2 of the Trademark Law, which provides that marks that acquire distinctiveness after use and are easily distinguishable can be registered as trademarks. Therefore, the trademark applied for was granted preliminary approval.

2. Examination of Whether the Trademark Constitutes an Identical or Similar Trademark

In judging whether the color combination trademark is identical with or similar to other trademarks that have already been applied for, the recognition of consumers should be used as a measurement. Such features that should be mainly observed are the permutation and combination, the class of color, and overall visual effect of the color combination trademark. If it is likely to confuse consumers as to the source of the goods or services when used on identical or similar goods, the mark shall be determined to be an identical or similar trademark.

3. A Color combination trademark does not fall into the class of marks prohibited in Article 10 of the Trademark Law from being used and registered. Special attention should be paid to avoiding trademarks that are identical with or similar to the national flags of foreign countries

Picture 3

 In accordance with the provision of Article 10 (1) of the Trademark Law, the national flags of foreign countries as well as the flags of intergovernmental international organizations are prohibited from being used and registered as trademarks. Since the national flags of many foreign countries contain a color combination, such as Italy's flag which consists of three colors, green, write and red, applicants should try to avoid "clashing" with foreign national flags when applying for the registration of color combination trademarks.

In conclusion, color combination trademarks are completely new to China in trademark development. Departments in charge of trademarks need to gradually gain more experience from the examination process, and learn from common international practices to identify China's examination standards. In 2005, the Trademark Office and the TRAB jointly issued the Trademark Examination and Cognizance Standards, which contains special provisions on the "examination of color combination trademarks". However, there remain many theoretical questions to be further discussed, such as how to distinguish a color combination trademark from graphic trademark with designated colors and whether a color combination trademark should be combined with a specific shape or whether it can be used without any restriction on shapes, etc. The resolution of the above questions depends upon the joint efforts of departments in charge of trademarks and intellectual property professionals to develop a more complete examination guideline.

About the author
    Shi Xinzhang is the examiner of Trademark Review and Ajudication Board, State Administration for Industry and Commerce of the PRC

                                                                                             (Translated by Ma Jing)