Gowling WLG (International) Inc - Russia
When scanning the shelves for a particular product, consumers typically look for the colour that they associate with their preferred brand. Indeed, colour plays a significant role in strengthening brand awareness and distinguishing products and services from those of their competitors. Unfortunately, this has motivated some companies to unfairly capitalise on the reputation of well-known brands by using similar colour schemes, creating confusion in the marketplace. Registering colour as the distinctive feature or as one of the distinctive features of a trademark can help to prevent such situations.
While colour marks are a relatively new concept in Russia, they are gaining traction. Some companies have already implemented brand protection strategies that utilise these kinds of marks. For example, JSC Ostankino Meat Processing Plant, a well-known manufacturer of meat products in Russia, owns the following two colour trademark registrations (RU 484863, left, and RU 649810, right):
What the law says
According to Russian law, a trademark (including packaging) is protected in the form and colour indicated on the registration certificate only. While it is permissable to use the colour version of a trademark registered in black and white or vice versa, only the registered version actually has legal protection.
Thus, if consumers associate a certain colour combination with a brand, but the mark is registered in black and white, a competitor may register a different one in this particular colour or colour combination and use it. As a rule, the more visual elements a mark has, the easier it is to imitate, as relatively few details need to be changed to achieve a similar impression with the consumer. If the similarity of designs becomes a matter of dispute, the infringer has the legal right to seek its own registration of a trademark with a focus on the colour(s) – even if it is very similar to that of another company.
A registration of a composite trademark having colour elements does not give the owner a monopoly on the use of that particular colour or colour combination, apart for the mark as a whole. Legal protection is granted for the relative position, proportion and shape of the colour(s). In case of possible infringement, the court decides on a case-by-case basis whether the exclusive right to a trademark has been violated.
When deciding whether to register a trademark in colour or black and white, it is important to consider how it is actually used and to register it accordingly. A trademark should be registered in colour only if it is used so consistently that it represents a distinctive sign of the company. Well-known examples of such cases are Tiffany (RU 560852, left) and Vanish (RU 310048, right).
Using a trademark in a way that involves the use of a colour that is not covered by a registration can be risky. If the mark is vulnerable to non-use and an interested party files a non-use cancellation claim, there is a high risk that the owner would be unable to prove qualifying use of the emark and its legal protection could be cancelled.
Proof of acquired distinctiveness
To register a colour mark in Russia, the owner should provide documentation that demonstrates distinctiveness by proving that consumers associate this colour or colour combination with the product and manufacturer. The requisite proof is not dictated by law and supporting information can include proof of:
- the length of time that the mark has been used;
- the volume of use and territories where used;
- brand books, advertising materials and expenses associated with the mark;
- evidence of public awareness of the mark (such as consumer surveys);
- publications in mass media;
- annual revenues and volume of sales;
- countries where the trademark is used and/or registered; and
- previously registered combined marks with this colour.
Rospatent exercises a strict approach when it comes to evaluating acquired distinctiveness and so there are not many registered colour marks in Russia. It is thus very important to develop a step-by-step marketing strategy and collect all the documents reflecting the colour(s) in question.
Russian Siberian Airlines (also known as S7 Airlines) provides a useful example of how to establish associations about the services of a particular company with a specific colour.
It has trademarks without colour indication (left) as well as its coloured version (right).
This bright green is used in all promotional materials and on the aircraft themselves.
Perhaps, this bright green colour has good chances to be the next colour trademark registered in Russia.
Black and white or colour? A checklist for brand owners
It may be helpful for foreign investors to think through the following questions when deciding whether to secure a colour trademark registration in Russia:
- Do you use the colour(s) widely and consistently in your business activity?
- Do your competitors also use the colour(s)?
- Do you have trademark registration in your country? Is it in colour? If so, do you always use the colour version?
- Do you have convincing corporate documentation showing use of the colour logo, particularly in Russia?
If the answer to most of these questions is yes, then colour plays an important role in your business and it is recommended that you:
- file an application for a combined trademark (word + colour);
- use the trademark as it was applied for and registered; and
- keep all relevant documentation about the registered trademark to protect it should a dispute arise.
These steps will help to protect your brand from attacks and provide a strong legal basis to stop potential infringers.
If you are not interested in a colour logo for your business, it may be more reasonable to register the trademark (word, logo or combined) without indicating a colour. If something changes and you find ‘your’ colour, you can apply for a colour trademark as well.