[Author: Hong Chang]

A color combination trademark refers to a trademark composed of two or more colors in a certain proportion and in a certain order, which can be registered and protected in China since the amendment of the Trademark Law in 2001. As a non-conventional trademark, the judicial protection of color combination trademark only has twenty years history in China, which is still in its infancy, with few relevant cases and some problems that are not commonly seen in traditional trademarks cases. In this article, the author will discuss several noteworthy issues in the judicial protection of color combination trademarks in China based on the analysis of some typical cases.

1. The object of protection of color combination trademark

First of all, many people may be unfamiliar with the definition of a color combination trademark, and it is often easy to confuse it with a device trademark with designated color(s), thus misunderstanding the protection object of a color combination trademark. Herein the author shall give a brief explanation. The color combination trademark does not limit the shape as it generally changes with the shape of the product itself, and its specific use manner is generally indicated in the trademark application, while the device trademark with designated color(s) must be in a fixed shape, and shall be used consistent with the registered trademark image in practice.

Since the type of color combination trademark is not clearly marked in the trademark registration certificate, it may be difficult to distinguish a color combination trademark from a device trademark with designated color(s), so attentions should be paid to how to prove that the trademark to which the party enjoys exclusive rights is a color combination trademark rather than a device trademark with designated color(s) in right enforcement.

In the trademark infringement and unfair competition case of “John Deere v. JOTEC International Heavy Industry (Qingdao) Co., Ltd.¹”, the court held that “the trademark claimed for protection is applied for as a color combination trademark limiting the specific use manner, for which the trademark registrant can provide evidence; meanwhile the right scope of the trademark registrant and the public's perception will not be in conflict. Under such circumstance, the right scope of the color combination trademark cannot be determined solely on the basis of the trademark specimen marked on the trademark registration certificate.” Therefore, apart from the trademark registration certificate, right holders can also submit the trademark application form and the evidence of actual use to prove that the color combination is trademarked. For example, in this case, the application form filed by John Deere stated that its trademark was a color combination trademark with the text description: “green for the body and yellow for the wheels”, and meanwhile John Deere also submitted the relevant evidence of use, thus the trademark obtained protection as a color combination trademark.

2. Determination on the infringement of color combination trademark

While conventional types of trademarks, such as device trademarks with designated colors, are often attached to goods or the packaging and are physically independent from the goods, color combination trademarks are often integrated with goods and used in accordance with the use manner indicated in the application, rendering them difficult to be separated from the goods. Therefore, when making infringement judgment, although the general judgment standard of whether it will constitute confusion will also be adopted, when it comes to the trademark signs, unlike traditional trademark infringement cases, not only whether the color itself in the trademark specimen is the same or similar, but also the way the color is used will be taken into consideration.

In the trademark infringement case of Roxtec AB v. MS-CISCO Electric (Suzhou) Co.², Roxtec AB had clearly stated in the application that the applied-for trademark was a color combination trademark and also further specified in the submitted textual description that the specific use manner of color was that blue and black were used in concentric circles on the designated goods, with the black circle in the center and surrounded by blue frames. The court found that the black inside and blue-and-black arrangement presented by the alleged infringing mark was in line with the description of the use manner of the involved trademark, and that the overall visual appearance was not significantly different and should be judged as the same trademark based on the general degree of attention of the relevant public. From this, it can be seen that the alleged infringing goods also need to be in line with the use manner described in the plaintiff's trademark if the infringement is to be established.

3. Other noteworthy issues

Like normal trademark infringement case, when making the infringement judgement for color combination trademark cases, the popularity of the color combination trademark of the right holder and the bad faith of the alleged infringer in using such trademark should also be taken into consideration, which is conducive to the determination of confusion and the increase of the compensation amount.

In addition, the color combination trademark is naturally flawed in distinctiveness, thus in order to get registration it is often necessary for the right holder to advertise and use the trademark extensively to acquire distinctiveness. However, it should not be taken lightly even after the registration is obtained. There is still a risk for the trademark being invalidated after obtaining the registration, if the registrant does not pay enough attention to the subsequent continuous use or neglect to enforce the rights which may lead to the dilution of the visibility and distinctiveness of the color combination trademark by a mass of copycats.

¹Beijing High People's Court (2014) High Civil Final Civil Judgment No.382

²Beijing High People's Court (2019) Jing73 Civil Final Civil Judgment No. 2736