Banana! Or, how to own a colour the Minion way

From Coke Red [Pantone 484] to Starbucks Green [Pantone 3298C], Cadbury Purple [Pantone 2685C] and BP Green [Pantone 348C], colours can be valuable trademark rights. Now, even Hollywood films are getting in on the act, as Novagraaf’s Claire Jones explains.

Colours form some of the world’s most recognisable and valuable trademark rights. Once registered – if they can be registered – they provide the trademark owner with an exclusive right to use that shade of colour, in relation to the goods/services for which it is registered and in the territory for which it is registered, and to stop others from using an identical/similar colour in relation to identical/similar goods/services, in the territory of registration.

The Pantone system is one of the most widely adopted guides for identifying and matching colours. No matter where or how something is produced, by specifying the relevant Pantone swatch colour, the exact colour can be replicated. For trademarks, which require clarity, precision and the ability to be represented graphically, the use of an international colour code has long been recommended.

Introducing the Minion Yellow A collaboration between Pantone Colour Institute and Universal Pictures/Illumination Entertainment has resulted in the first ever character-branded colour, ‘Minion Yellow’, based on the popular characters from Despicable Me. According to Pantone’s press release, the colour “heightens awareness and creates clarity, lighting the way to the intelligence, originality and resourcefulness of an open mind – this is the color of hope, joy and optimism“.

The Pantone colour does not allow Universal et al to prevent others using the colour, at this time. The colour has simply been given a name and the recognition from Pantone in the same way as its ‘Colour of the Year’.

Will Universal apply to protect it as a trademark? The film has already surpassed the US$900million mark and Minion merchandise is hard to escape.

Hurdles to registration Following the Cadbury Purple decision in the Court of Appeal of England and Wales (see full judgement here), one of the main stumbling blocks to the registration of a colour trademark in the UK is the use of ‘predominant’ in the description of the mark, as this is deemed to be too imprecise. The main factors to be considered, in this respect, are the proportion of the surface area of the packaging on which the colour appears, the position of the colour, and whether it appears as a continuous block or is mixed up with other colours.

Does a Minion class as packaging? Is he more than 50% Minion Yellow? And what of the different Minion characters? They each take a different form and persona, unlike other animated characters, such Toy Story‘s Buzz Lightyear or Olaf from Frozen.

The biggest factor to be considered, and which is fundamental to all trademarks, is whether the colour yellow is solely indicative of Universal’s Minions and whether it serves to distinguish the goods of the Minion franchise from those of other similar franchises. What about other iconic yellow cartoon characters, such as Fox’s The Simpsons? Can the average consumer spot any difference in the colours of The Simpsons‘ characters versus the Minion characters, and do they even use the colour to differentiate between the merchandise of the two franchises?

Even if Universal is awarded a trademark, how will the colour be enforced? The studio cannot stop someone using Minion Yellow to paint a bedroom, and it may face difficulties when trying to enforce its rights against other uses of yellow for commercial gain. However, subject to the point above regarding The Simpsons, a registration could help prevent the use of copycat characters that are not recognisably Minions. A number of recent cases provide helpful guidance in the EU in this respect:

• Nivea Blue – Germany Germany’s Federal Court of Justice has sent a feud between Unilever and Beiersdorf back to the courts after ruling that the Patent Court’s requirement that 75% of consumers must associate the colour with Nivea was too steep. The Federal Court of Justice held that the requirement was prohibitively stringent and only a majority, or 50%, was sufficient.
• Orange – Spain In a dispute over the colour orange against Jazz Telecomm, the Spanish Supreme Court refused Orange’s application consisting of a plain orange square.
• Rosetta Stone – Germany Rosetta Stone, the publishers of a range of language software packages and German dictionary publisher Langenscheidt both use shades of yellow. The German Federal Supreme Court found that Rosetta Stone’s use of yellow for language dictionaries was an infringement of Langenscheidt’s rights. The judge held that, in order to register a colour as a trademark, the product had to have a large market share, a long history of sale and a public perception linking that colour to that product.

The verdict echoes the ruling of the earlier European Court of Justice ruling in Oberbank v Santander, which involved the colour red.

For a different kind of Minion branding, see here.

Claire Jones is a trademark attorney in the London office of Novagraaf