Registration of color as a trademark: the case of Wizz Air and legal challenges in Ukraine

Decision of the court of first instance

The decision of the court of first instance was based on the fact that the claimed mark for services of class 39 of the Nice Classification (air passenger transportation; airline transportation services) has no distinctive character and has not acquired it as a result of its use, and does not have a characteristic graphic design. The airline disagreed with the decision and appealed it to the court, where the court of first instance agreed with the plaintiff’s arguments, citing the following: the pink color under application No. m201810403 has acquired distinctiveness in the field of air transportation due to the continuity of its use and the possibility of the pink color to be the only distinctive element, and the defendant did not provide evidence of the existence of other airlines in Ukraine that would use the pink color when providing services of class 39 of the Nice Classification as of the date of filing application No. m201810403.

Appeal proceedings

When reviewing the decision, the Court of Appeal sided with the defendant in the original lawsuit. Thus, the results of a sociological survey conducted in 2021 on the level of consumer awareness of the pink color among other airlines in this case cannot confirm the said recognition as of 2018 (i.e., at the time of filing the application), since the survey does not cover this period. In its decision, the court noted that the conclusions of the court expert and the examination refute the plaintiff’s arguments that the pink color has acquired distinctiveness in the field of air transportation, the continuity of its use and the possibility of the pink color to be the only distinctive element of the plaintiff’s company, and as a result, to be registered as a trademark. In addition, the pink color or its shades are used in the air transportation market not only by the claimant, but also by other airlines, namely: Icelandic airline WOW Air, Canadian airline JetWest, Japanese airline Peach, Thai airline Nok Air, Brazilian airline Azul.

Cassation proceedings

The Court of Cassation upheld the decision of the Court of Appeal. The decision was motivated by the fact that when a color is applied for registration of a trademark, a prerequisite for the corresponding trademark registration is to determine whether the color designation acquires distinctiveness when applied to the claimed goods or services. In this case, the determining criterion for evaluation is the test for the fulfillment by the claimed color of the main function of the trademark, namely whether the color applied for registration as a TM allows the consumer to distinguish among other goods or services of one manufacturer from the goods or services of another manufacturer without any likelihood of confusion. Consumers must unambiguously perceive such color (without additional graphic and verbal elements) as a mark for specific goods or services, and therefore, to register a color as a mark, convincing evidence of the acquired distinctiveness of the color exclusively for the claimed goods or services is required. The Court notes that the distinctiveness acquired through use is allowed only under exceptional circumstances, in particular, when the number of claimed goods and services is very limited and the relevant market is very specific. In other words, registration of a color as a TM is possible for a very narrow range of clearly defined goods or services.

Conditions for obtaining legal protection

This case demonstrates that in order to successfully obtain legal protection for a color, it is necessary to prove its unambiguous association with a particular brand and the ability of consumers to unmistakably identify it as a distinctive characteristic of that particular brand. An important aspect is the availability of convincing evidence confirming that consumers perceive color as an independent distinctive element without additional graphic or verbal components. In addition, the practice of court decisions shows that registration of color as a trademark is possible in cases where the scope of its application is narrow and specific, and the market is limited. This is because in such cases, the likelihood of confusion with commonly used colors in other industries is significantly reduced.

Therefore, it is possible that evidence of long-term, continuous use of the color, recognition of the TM among consumers in the airline industry and the absence of similar use by other airlines at the time of filing the application could increase the chances of successful registration of the color as a trademark.

Comparative case study

A similar situation occurred with Roshen Corporation and application No. m201710458. The company filed for registration of the red color for goods of classes 16, 22, 30 of the Nice Classification, but also received a refusal, which was later appealed in court. In this case, the Supreme Court noted that the greater the number of goods and services applied for registration, the greater the likelihood of unreasonable restriction of the availability of colors for others selling goods or services of the same type as those for which registration is sought (applied for), i.e., successful registration requires the acquisition of distinctiveness for each good and service in accordance with the declared class of the Nice Classification.