Experts Warn Recent Cases Make Preserving Trade Mark ‘Trickier’

Pantone’s creation of ‘Minion Yellow’ and the subsequent debate as to whether it will eventually be trademarked by Universal Studios has put the issue of colour and intellectual property back into the spotlight, according to legal experts.

The film studio behind the Despicable Me franchise has joined with Pantone to create the colour – which is believed to symbolise ‘hope, joy and optimism’ – with the move believed to be the first time a colour has been created and named after a character.

However, debate has emerged as to whether Universal Studios will now seek to register the colour as a trade mark for its own commercial merchandise and service lines, after Pantone stated the colour was added to its home and interiors palette.

According to intellectual property specialists at Irwin Mitchell, recent cases in relation to colours and trademark could mean that such a move is difficult to take.

Expert Opinion

“Love them or hate them, the Minions are everywhere – on our cinema screens, in Happy Meals and even have a dedicated fan site on Facebook.

“Universal Studios has varying IP mark protection in relation to the phenomenon, although it is worth noting its EU trade mark application for ‘Despicable Me Minion Made’ is under opposition.

“It would be wise for the film studio to remember that there have been numerous trade mark registrations for specific pantone colours in the past, such as for the colour turquoise Heinz uses for its Baked Beans, the distinctive red colour used by Christian Louboutin on the soles of its shoes and a specific pantone colour owned by Orange for – amongst other things – telecommunications.

“However, the issue of whether you can obtain registrations for colours in relation to the packaging of goods is in issue, following a Court of Appeal decision where Cadbury’s lost its trade mark registration for its famous colour purple (Pantone 2685C) following a challenge from Nestle.

“This decision has made it trickier for brand owners to secure and preserve their registered trade mark protection for colour marks and any application by Universal Studios for Minion Yellow would have to be carefully crafted and is unlikely to be smooth running.”
Georgie Collins - Partner