Dr Monika Żuraw

The colour game: pink as a trademark

The issue of colour as an element of a trademark will once again be the subject of a ruling by the courts in Poland. This time it is pink.

The court case was just filed this year, and a ruling on the merits of the dispute has not been issued yet, but the Katowice Appellate Court upheld an order granting a temporary injunction in favour of the plaintiff, recognising in principle that pink could be an element of a trademark (order dated 30 June 2010, Case No. V ACz 434/10).

The plaintiff in the case is the producer of a well-known spot remover sold in characteristic pink packaging under the brand name Vanish. The defendant produces a spot remover called Satin. The graphic design of the Satin packaging is similar to that of Vanish, with pink as the dominant colour.

The appellate court upheld the injunction issued in favour of the plaintiff on trademark and unfair competition grounds, but raised several fundamental issues in the justification. The court stressed that the dominant colour used in the packaging should be considered in the context of the overall similarity of the product packaging, because the graphic composition is a decisive element with respect to the existence of a risk of confusion between the brands. The real risk of confusion depends on the overall impression.

Minor differences in colour, the different name of the two products, the use of additional words on the packaging, and the different size of the units offered by the two parties were insufficient to eliminate the risk of confusion on the part of consumers.

The appellate court did not uphold the plaintiff’s demands entirely. It had sought a ban on production and distribution of the Satin product for the duration of the case. The appellate court allowed the defendant to continue producing and marketing Satin, but in different packaging, citing the fact that the plaintiff had asserted a claim related to packaging and not the product as such.

The ruling from Katowice extends the existing line of precedent from the Polish Supreme Court under which the key elements that should be considered in a claim that a producer has violated good practices are the similarities between the products, not the differences. Significantly, the appellate court found that the colour of the packaging was of predominant importance as an indication that the goods in question originated from the specific producer. The court also found that the difference in name and other minor differences did not eliminate the risk of confusion on the part of consumers.