Trademark law: Instagram and its color

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I’ve already told you about color marks.

You will recall, for example, that Verve Aliquot’s Pantone 137 C orange color constitutes, in itself and as such, a valid trademark; just like the Pantone Blue 2748C from Alken-Maes Breweries.

Today I would like to mention another interesting and recent case in the field of color marks.

This case concerns the Instagram Company which tried to obtain a mark on the color or, more exactly, on the following color gradient (which can be found, for example, as the background of the Instagram logo):

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Unfortunately, unlike Verve Aliquot and Brasseries Alken-Maes, Instagram was unable to obtain registration of its color gradient, as it was deemed non-distinctive by the European Intellectual Property Office (EUIPO). As of October 16, 2019.

Like all trademarks, to be valid, color marks must be distinctive, i.e. that they must allow the relevant public, as soon as it perceives the color or the combination of colors, to identify the company behind that color / combination of colors. Indeed, the essential function of a mark is to distinguish the goods and services of one company from those of another.

The essential question for color marks therefore arises in these terms: by perceiving the color / combination of colors, is the relevant public able to identify a particular company and its products or services?

  • If the answer is yes (as it was for Veuve Clicquot orange and Alken-Maes blue), the color can be considered a valid mark.
  • If the answer is no, the color cannot be considered a valid mark.

However, for Instagram, the Office considers that the answer is negative.

According to the Office, the color gradient claimed by Instagram will not be remembered by the relevant public and a fortiori will not be perceived as a distinctive sign.

This color gradient will therefore not allow the relevant public to directly identify Instagram and its products or services, nor to distinguish them from those of other companies. For this reason, the Office notes the lack of distinctive character of the color gradient claimed by Instagram and refuses to register it as a trade mark.

The Office also notes that the relevant public does not carry out in-depth analyzes … It is therefore necessary, for there to be material for a valid color mark, that the relevant public can identify a company and its products or services instantly when he is faced with color. However, this is not the case in the present case. Especially since, as the Office further emphasizes, despite the very many shades and tints of colors that exist in theory, the public has a very limited capacity to differentiate colors (without in-depth examination).

It is therefore a “no-go” for Instagram with its gradient of colors, which gradient cannot, according to the European Intellectual Property Office, constitute a valid trademark in the absence of distinctive character.

We can see that in the matter (color marks), a strong subjectivity exists… Why in such a case, a (combination of) color (s) has the capacity to distinguish products and services; and in other cases the answer is no?

Especially since, as noted by Instagram, the Office has, in the past, accepted, without problem, other color gradients:

It is difficult to derive completely objective assessment criteria from them.

It remains, it is true, that to obtain a monopoly in the title of trademark on a color is difficult – which can, in a sense, be understood legitimately insofar as if a color is registered as a trademark by trademark management software, one deprives third parties of the right to use this color.

Another illustration of the subjectivity of this kind of examination: being an Instagram user myself, I immediately recognized the gradient of colors claimed by Instagram as a trademark (gradient which is used, as a background, on all current Instagram logos). If I had had to judge the distinctiveness of this color gradient, I would certainly have come to another conclusion (due to the massive use made by Instagram of this color gradient – distinctiveness acquired through use)…