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1. Facts

The legal question arises within the framework of the Trade Marks Act 194 of 1993 (the TMA), which governs the registrability and protection of trade marks in South Africa. Historically, the preceding 1963 legislation did not permit the registration of certain non-traditional marks, such as shapes or configurations, but the current Act has significantly broadened the definition of what may constitute a mark.

The factual matrix involves businesses seeking to protect specific visual identifiers, including colours and colour combinations, to distinguish their goods in a competitive market. In Royal Salt Company (Pty) Ltd v Swartkops Sea Salt (Pty) Ltd, the court dealt with the colour orange on salt packaging[1]. In Ussher Investment (Pty) Ltd v Elite Trade Centre, the court considered a green and yellow colour combination used on wheelbarrows[2]. Other cases have addressed red stripes in toothpaste, orange and green combinations in nutraceuticals, and fluorescent green in industrial gloves[3][4][5]. These examples expose the recurring tension between colour as a badge of origin and the colour depletion concern that a finite supply of colours should not be monopolised by a few undertakings[6].

2. Issues

The primary issue is whether a colour per se, independent of any specific shape or logo, is capable of being registered as a trade mark under the TMA.

• Whether a single colour satisfies the definition of a mark and the requirement of graphic representation.
• What degree of inherent or acquired distinctiveness is needed for colour to function as a badge of origin under section 9.
• How colour depletion and anti-monopoly policy affect registration.

3. Principles

Section 2(1) defines a mark as any sign capable of being represented graphically, expressly including colour or any combination of colours[7]. Section 9 requires that a registrable mark be capable of distinguishing the goods or services of one person from those of another, either inherently or through prior use[7].

In Royal Salt, the court held that a colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking, because consumers do not ordinarily assume origin from colour alone in the absence of graphic or word elements[1]. In Ussher Investment, the court confirmed that a colour combination can acquire a distinctive character through extensive and long-term use[2].

Section 32(1) allows a trade mark to be limited to a particular colour, and that limitation must be taken into account when assessing distinctiveness[7]. The Supreme Court of Appeal in Beecham Group Plc v Triomed (Pty) Ltd emphasised that distinctiveness is factual and should not be rejected a priori, although descriptive or functional features are harder to prove as trade marks[8].

Sections 10(2)(a) and (b) exclude marks that are not capable of distinguishing or consist exclusively of signs indicating characteristics of the goods[7]. Evrigard noted that proving reputation in a colour applied to an article is difficult, but not impossible[5]. The proviso to section 10 protects a mark from refusal or removal if it has in fact become capable of distinguishing through use[9].

Current practice also requires precision for colour marks, usually through an internationally recognised colour code such as a Pantone number[6].

4. Application

The TMA opens the statutory door for colour marks, but the threshold is formidable. A colour per se is generally origin neutral rather than origin specific[10]. Royal Salt reflects the same point: consumers are not usually trained to infer source from colour alone[1]. Colour depletion reinforces that caution because a monopoly over one colour can unfairly restrict competition[11][6].

An applicant will usually need acquired distinctiveness. It must prove not merely that the public recognises the colour, but that the public relies on it as a guarantee that the goods emanate from a specific source[12]. Ussher Investment shows the sort of evidence that can succeed: uncontroverted proof that the green and yellow combination had become synonymous with the applicant's wheelbarrows through years of exclusive use[2].

Graphic representation is also a real constraint. A simple visual sample may be insufficient. The application should specify a recognised colour code and describe exactly how the colour is applied to the goods[6]. If the colour is functional, section 10(5) would likely bar registration[7].

5. Conclusion

A colour per se can be registered as a trade mark in South Africa because it falls within the statutory definition of a mark. However, it is virtually never inherently distinctive and will ordinarily be registered only on clear and compelling proof of acquired distinctiveness through extensive prior use. The application must also be technically precise, typically by using an internationally recognised colour code to satisfy graphic representation.

Bibliography

1. [1]
   Royal Salt Company (Pty) Ltd v Swartkops Sea Salt (Pty) Ltd[2011] ZAECGHC 79 - Eastern Cape High Court - 15 December 2011Visit case
2. [2]
   Ussher Investment (Pty) Ltd v Elite Trade Centre[2006] ZAGPHC 209 - Gauteng High Court - 26 May 2006Visit case
3. [3]
   Smithkline Beecham Consumer Brands (Pty) Ltd v Unilever Plc[1995] ZASCA 26 - Supreme Court of Appeal - 27 March 1995Visit case
4. [4]
   Pharmachoice Healthcare (Pty) Ltd v Nutrilida Healthcare (Pty) Ltd[2006] ZAGPHC 191 - Gauteng High Court - 11 May 2006Visit case
5. [5]
   Evrigard (Pty) Ltd v Select PPE (Pty) Ltd[2024] ZAGPJHC 183 - South Gauteng High Court - 26 February 2024Visit case
6. [6]
   IP and IT Law: Colouring between the linesDKVG - colour marks and colour depletionVisit case
7. [7]
   Trade Marks Act 194 of 1993Sections 2, 9, 10 and 32Visit case
8. [8]
   Beecham Group Plc v Triomed (Pty) Ltd[2002] ZASCA 109 - Supreme Court of Appeal - 19 September 2002Visit case
9. [9]
   Commercial Auto Glass (Pty) Ltd v Baker Street Trust[2006] ZAGPHC 3 - Gauteng High Court - 24 January 2006Visit case
10. [10]
    Pepkor Retail (Pty) Ltd v Truworths Ltd[2016] ZASCA 146 - Supreme Court of Appeal - 30 September 2016Visit case
11. [11]
    National Brands Ltd v Cape Cookies CC[2023] ZASCA 93 - Supreme Court of Appeal - 12 June 2023Visit case
12. [12]
    Dart Industries Inc v Botle Buhle Brands (Pty) Ltd[2022] ZASCA 170 - Supreme Court of Appeal - 1 December 2022Visit case