Publisher Wins Right to Register Trademark Colour

The Appeal Chamber of the Intellectual Property Department of Ukraine has reversed a decision to refuse trademark protection in respect of a shade of red (Pantone DS 90-92) on the basis of non-distinctiveness.

The decision, issued on June 21 2006, confirmed that the colour in question can be registered as a trademark in International Class 16, which includes "periodical printed media on the law". The applicant was Yuridicheskaya Practica, a publishing company known in Ukraine for its legal periodicals. The chamber established that the colour had gained distinctiveness through continuous active use by the applicant.

The applicant began its publishing activities in 1994, concentrating on printed media containing legal news, analytical articles, interviews with lawyers and legal analysts, court decisions and reports on judicial practice.

The shade of red in question was widely used in the design of the applicant's printed media, as a result of which readers associated it with the applicant's periodicals, which they were able to recognize by colour. The applicant also used the colour on its websites, as well as in advertising and promotional materials. A survey of members of the Ukrainian Bar Association confirmed that the relevant sector of the public largely associated the colour with the periodicals published by the applicant.

The chamber identified the use of main colours as a characteristic design element of different periodicals as a trend in publishing, concluding that such use allows readers to distinguish a particular newspaper, journal or other periodical. It found that the colour had gained distinctiveness in Ukraine and could therefore be registered for use in relation to legal periodicals.