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23 April 2007
Article 15 of the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) provides that combinations of colours may be registered as trademarks. Article 1 of the Argentine Trademark Act (22,362) states that combinations of colours can be registered as trademarks provided that they are used in a fixed place on products or containers. Article 2 provides that the natural or inherent colour of a product, or a single colour applied to a product, cannot be considered to be a trademark.
In Kraft Jacobs Suchard v Chocolates Bariloche (Case 2986/98, February 2 2006) the Third Court of Appeals of the Federal Circuit on Civil and Commercial Matters rejected an action brought by Kraft Jacobs Suchard to prohibit Chocolates Bariloche from using the lilac colour that distinguished the packaging of the different kinds of chocolate marketed by the defendant. Kraft argued that its extensive use of lilac to identify chocolates would make it likely that consumers would associate the products marketed by Chocolates Bariloche with those manufactured and sold by Kraft. In view of Article 1 of the Trademark Act, the court stated that Kraft was not entitled to claim exclusive rights to a single colour. The court added that the words included on the packages made them different in the minds of consumers.
In Pfizer Inc v Microsules y Bernabó (Case 5862/01, August 15 2006) the First Court of Appeals of the Federal Circuit on Civil and Commercial Matters recognized Pfizer Inc's exclusive rights to medicine pills identified by a blue colour. Pfizer filed a suit against Microsules y Bernabó to stop the manufacture and marketing of pills distinguished by a three-dimensional diamond shape with a blue colour. In the decision, the court held that the trademark registered by the plaintiff was original given the specific combination achieved by the blue colour and the special shape of the pill. Moreover, the court considered that the product marketed by Pfizer has become known worldwide as 'the blue pill' and as a medicine that has a specific therapeutic effect. The court concluded that Microsules had practised unfair competitive behaviour by marketing a medicine with the same therapeutic effect with the same shape and colour.
Based on these two decisions, the Federal Court of Appeals does not appear to recognize the exclusive right to a single colour used to identify a product. However, if a company has been marketing products or services identifed by a single colour for a certain period of time, resulting in consumers associating that colour with the marketed products or services, third parties should refrain from using the same colour to identify the same or similar products or services. Under these circumstances, Article 15.1 of the TRIPs Agreement may be considered in order to claim exclusive rights on signs that have acquired distinctiveness through use.
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