Color Trademarks and Decision 486 of the Andean Community

July 2020

The Andean Community Court of Justice confirmed that, based on Decision 486, color can be protected as a trademark, provided that it is contained within a particular (and not necessarily distinctive) form. In this brief note we discuss the details of this interesting resolution.

The Andean Community Court of Justice, in a recent ruling, confirmed the decision taken by the Colombian Patent and Trademark Office (the “Super”) to register the pink color mark (Pantone 183 C) to a carbonated beverage of the company POSTOBÓN for “mineral and carbonated waters and other non-alcoholic beverages; apple flavor ”.

Imagen que contiene taza, tabla, vidrio, botella Descripción generada automáticamente

The basic argument of the appellant was that the shapes delimiting the color of the trademark are usual and therefore lack distinctiveness, not being able to endow the color with any particularity. He also claimed that the requested color is characteristic of the oxidation process of the apple and that, therefore, it is necessary for the marketing of apple drinks.

The attorneys defending the position of the Colombian State argued that the pink color (Pantone 183c) was not a necessary color to identify the product in the market and that such color, being contained within a particular shape, acquires, as a whole, distinctiveness.

The Andean Court, not getting into the analysis of the subjective assessment made by the Super – since that is not its role in the context of the appeal brought by the opponent- ruled that the Colombian state had not broken the Andean legal system stipulating that a trademark must meet two requirements: distinctiveness and capacity of being graphically represented. Consequently, a color can turn distinctive  as long as it is contained within a two-dimensional form which allows the average consumer to differentiate it from other products.

The Andean Court also recalled that it is not required that the shape containing the color be distinctive, nor that the color itself has acquired distinctiveness prior to the filing of the application. With the exception, obviously, of cases in which the color fails to distinguish the products, such as a color that represents the product (for example, the color white to identify milk).

The key point of this resolution is that it confirms that Decision 486 of the Andean Community allows the filing of non-traditional marks such as, in this case, color marks, defining its limits and requirements. In any event, it will be necessary to pay attention to the scope of protection that a brand such as this one is granted in court, since the requirement that color be contained within a certain form may limit substantially the scope of protection of the trademark, not reaching perhaps products that, sharing color, have different shapes. We will be monitor this and will keep you posted of further developments

Hugo Andrés Obregón Arámbula / Eduardo Zamora