When we think of trademarks in business, we think of slogans, phrases, logos, and symbols. But both the WIPO and the Lanham Act define this segment of intellectual property (IP) broadly as anything used in commerce and distinguishes a brand from others in the market. That includes shapes, sounds, fragrances, and even colors–although it is a lot harder to trademark a color, it is not unheard of. The party seeking such a trademark must establish that consumers in the specific market associate the color with their products. Back in 1995, the US Supreme Court in Qualitex Co. v. Jacobson Products Co., Inc. held that a color could be trademarked if the owner could show that the color acquired “substantial distinctiveness” and “secondary meaning in the market.”
According to BP, the petroleum giant, people in Australia recognize their products by the color green. Unfortunately for BP, IP Australia, the governing body, disagreed and refused to grant the oil and gas company a trademark over the shade of green, Pantone 348C. BP has been trying to register a trademark over the color in Australia since 1991 but has faced many hurdles along the way. It had been granted the mark for a short span in the mid 90’s but Woolworths disputed the claim.
Trademarks cannot be deceptive. For example, I am pretty sure if an insecticide company, “Chocolatey Goodness,” tried getting a trademark for its name it would be denied. Right quick. What is the first thing that pops into your mind when you think of the color green? Trees? Grass? Recyclable products? Most people associate the color green with nature, and green has become a suffix to many terms indicating ecofriendly goods. That being said, it is quite ironic that a petroleum company responsible for one of the largest oil spills ever wants to trademark that color. As an aside, I must mention that in the petroleum industry, BP’s competitors all associate Pantone (green) 348C with BP.
A couple of notable companies that have trademarks over a color include Caterpillar Inc. for “Caterpillar Yellow,” T-Mobile for magenta, and Tiffany & Co. for “Tiffany Blue.” But this doesn’t mean you can’t dye your hair magenta; a trademark on a color is only limited to competitors in the same industry and does not grant the trademark holder exclusive rights to use the color. That means I can use a combination of green and yellow for my restaurant, but not if I want to sell outdoor power equipment, as John Deere has a trademark on that particular color combination.
I think one factor that may limit any IP body’s willingness to grant BP a trademark over a color is the broad scope of BP’s enterprises. If you ask me, BP should try trademarking a shade of blackish-blue. Then again, oil does not mix with water so perhaps plain black. That would align better with their image.