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Protecting Colour Combination in China

08

JAN

2021

Colour will make a brand more impressive. Some colours have been deeply integrated into the brand’s DNA, which become an indispensable part of the brand image. For example, light blue for jewelry boxes (Tiffany); brown for parcel delivery trucks and uniforms (UPS); orange for scissor handles (Fiskars) and blue for tractors and yellow for wheels (John Deere).

Colour combination mark was firstly accepted in China in 2001. With the number of marks increasing in China (7 million last year), a large number of applications filed meet with a citation of a prior mark. Brand owners seek protection for more non-traditional trademarks such as sound marks, 3D marks and colour combination marks. According to China trademark law, those non-traditional trademarks can be registered, as long as they are able to identify and distinguish one’s goods or services from those of other sources.

Lacking of inherent distinctiveness

Like in many other countries, it is not easy to successfully register a colour combination mark. A colour combination mark will always be refused during the substantive examination stage. Acquired distinctiveness is always required in the refusal review proceeding.

Below are examples of colour combination marks that were denied for trademark protection.

Mark filed

Actual use

If the colours or colour combinations are already widely used with respect to a particular type of good or service, or particular elements thereof, it will be difficult for any one person to establish secondary meaning. On the other hand, if colours are not already widely used within a particular market for some good or service, or if the applicant’s use of a particular colour or colour combination is unusual or elaborate, then it is more likely that acquired distinctiveness can be shown.

Generally, acquired distinctiveness is best shown by a high volume of advertising involving the colour combination mark, as well as consumer surveys reflecting that a high degree of relevant consumers associate that particular color or combination in connection with a certain good or service with the applicant.

Single colour

Article 8 of the Trade Marks Law of the People’s Republic of China stipulates that an application of “colour combination” may be made to register as a trademark, which precludes the registrability of single colour as a trademark. Beijing Higher People’s Court’s decision in an appeal of refusal review of the Louboutin high-heel dress shoe soles in 2018 pointed out the mistake made by the first-instance court and the Trademark Review and Adjudication Board (the TRAB), that the mark at issue is the single colour with determinate position, rather than a common high heal device with a sole claims colour (recognized by the TRAB) or a 3D mark (recognized by the first instance court Beijing IP Court). The appellant court orders the TRAB (now the CNIPA) to make a new decision based on the corrected facts found. This case caused great controversy and debate amongst legal experts, reviewers, IP practitioners and journalists. Some believe that the appellant court’s decision suggested that single colour with precise position is not prohibited for registration in China. While others believe that this judgment does not necessarily mean that signle colour mark is registrable in China and the court merely ordered the CNIPA to correct the error on the subject matter of examination; the examination results would be based on whether this sign can function to identify the sources of goods and whether acquired distinctiveness is shown. We will wait to see how the CNIPA re-makes the decision on this refusal review.

View of the Chinese courts for infringement based on colour combination mark

In the case of Duracell U.S Operations, Inc. V. Yangsong ming and Yiwu Songming Batteries, Yiwu court concluded that the use of the similar cooper and black colour tone infringes the Plantiff’s registered colour combination mark, which has gained high reputation. The Plaintiff - the succeeding party in the proceeding – has been awarded the reimbursement of RMB 60,000 (approximately USD 8,970) for damages and legal expenses.

The claim for infringement of the colour combination mark

Duracell’s colour combination mark was once rejected for devoid of distinctiveness in 2001. Through refusal review, the TRAB accepted the mark for registration on the basis that the relevant colour combination, through use and promotion for an extended period of time, had become a distinctive sign of the applicant's battery products.

The Infringing Batteries are in copper and black colours, in 1:2 proportion, and they also use the "POWERCELL" mark. The plaintiff's primary objective is to obtain a successful judgment against unauthorized batteries using the copper and black colour tone (in 1:2 proportion), without considering the word mark used on the batteries. It is presented to the Court that "DURACELL" and the colour combination mark are two distinct marks, and two separate claims relying upon the two marks were made respectively.

A precedent judgment made by Guangdong Higher People’s Court was also submitted as reference. The relevant civil case concerned the defendant's batteries which use the word mark "Super ROYAL" (and also the copper and black colour tone). The word mark "Super ROYAL is completely different from "DURACELL". Accordingly, the Judgment is made in favour of Duracell purely on the basis that the defendant's batteries use the copper and black colour tone which is identical or substantially similar to Duracell’s colour combination mark.

Similarly, the judgment of this case recognizes that the defendants’ selling activities infringes the plaintiff’s trademark rights over "",“", "", and "". Although the court did not comment on the claim for infringement of the colour combination marks "" and get-up "" and the claim for infringement of "DURACELL" and "" separately, it concluded in the ruling part that, having been combined with the other Chinese registered marks "DURACELL", "金霸王" (Duracell in Chinese characters), etc., through long-term use and promotion, the colour combination mark has become a distinctive sign of Duracell's batteries and has acquired a relatively strong distinctiveness and reputation, and it is known to the general consumers. Consumers can rely upon the colour combination on the batteries to distinguish Duracell's batteries from those offered by other entities. The Infringing Batteries in this case are in copper and black colours, in 1:2 proportion, also using the "POWERCELL" mark. These are likely to mislead the consumers concerning the source of the batteries or cause the consumers to misbelieve that their batteries and Duracell's are somehow associated.

The Judgment further confirms that the Defendant's batteries infringe the trademark "DURACELL", amongst the Plaintiff's other marks. Whilst the Judgment does not specifically comment on the mark "POWERCELL" on its own, since it is held that the batteries infringe the trademark "DURACELL" which is a pure word mark without any colour element, the Court should have considered that the word mark "DURACELL" is infringed by the Defendant's use of "POWERCELL" (ignoring the colour element). Based on the Judgment, use of "POWERCELL" on batteries (ignoring the colour element) is considered to be an infringement of "DURACELL".

Infringing batteries

The colour combination mark

In the case of Deere & Co. V. Jotec Qingdao Inc. and Jotec Beijing Ltd., Beijing Higher People’s Court holds the similar ruling logic. The court affirmed the defendants’ infringement of the colour combination mark, and awarded the damages at the amount of RMB 400,000 (approximately USD 597,900) plus legal expenses at the amount of RMB 50000 (approximately USD 7,474).

The claim for unfair competition

The Court does not support the Plaintiff’s claim that the use of the colour combination mark constitutes unfair competition, because the trademark law has rendered sufficient remedy to stop the alleged activities.

Challenges met in enforcing trademark rights for colour combination marks

The brand owners for colour combination mark met with challenges from the infringing party that the publication of the colour combination mark has procedural defects. The reason behind it may be that the information on how the colour combination mark is used is not completed published. Although it is required to specify in the application on how the colour combination mark will be used, such information is neither included in the trademark registration certificate, nor indicated on the publication of the mark, which cannot be publically accessible. It also does not indicate that the mark is a color combination mark on the trademark registration certificate, which is the most important proof of ownership for the rights. This defect makes the enforcement of colour combination mark more difficult. In the case of ANDREAS STIHL AG&CO.KG V. Zhejiang H, the colour combination mark was wrongly recorded as a device mark claiming colour.

In the appeal of refusal review of Roxtec AB’s colour combination mark, the Trademark Review and Adjudication Board (the TRAB) cited a device mark claiming color to refuse the colour combination mark.

Application mark:

Cited mark

Similarly, in the aforementioned Duracell case, the defendants argued that they cannot ascertain the cited mark at issue is a colour combination mark and consumers are not aware of the protection scope of the colour combination mark. This is indeed a procedural defect for the publication of colour combination marks. The Defendants stated that they do not have subjective intention to infringe the colour combination mark. This should be one of the reasons why the damages awarded in that case is not high.

Hopefully, the CNIPA can upgrade its technology means and make it publically accessible in the publication and registration certificate announcing on how the colour combination mark is used clearly and precisely, in order to protect the brand owners’ rights as well as the social public’s interests. By doing so, we trust that the brand owners will not meet so many challenges when enforcing the colour combination marks.


In the competition for brand positioning, many are related to color. Especially in the communication battle of competing for the minds of consumers, brands all hope to use color to express their unique personality and form a simple, direct and easy-to-remember impression. Colours can play a role in brand history and increase consumer loyalty. Although the registration and enforcement of colour combination mark has certain difficulty, it can often help businesses achieve more results with half the effort in this brand visual marketing campaign. Hopefully, the brand owners are more inclined to seek protection for unique colour combinations as early as possible, in order to secure a victory in the colour wars.

About the Firm

Unitalen Attorneys at Law
Address 7th Floor, Scitech Place, No. 22 Jian Guo Men Wai Ave., Beijing, 100004 P. R. China
Tel 86-10-5920 8888
Fax 86-10-5920 8588
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