Case study – conflict between figurative trademarks by different combinations of the same two colors

The theme of reflection has been influenced by a recent case pending before the Bucharest Court of Law in which the holder of a number of combined figurative trademarks registered at national, community and international level, protected for all 45 classes of goods and services, O.P. S.A., a distributor of petroleum products, filed an application against another company with the same profile, requesting the cease of use of the “registered trademarks held by the Plaintiff” and “rebranding of the petroleum product distribution station at the own expense ” of the Defendant, M.S. S.R.L.

The trademarks mentioned by the Plaintiff contain drawings representing either the fuel distribution station as a whole or certain signs representative for the national brand built on the Romanian territory, all containing yellow and blue colors. The most important trademark invoked by the Plaintiff consists of two rectangles using the colors blue and yellow, registered for classes 4, 35, 36, 37 39 and 43 in 2010.

In this regard, the Plaintiff claimed that no oil company or gas station is allowed to use any combination of yellow and blue colors.

Using a Statement of Defense, the defendant M.S. SRL showed that it operates without violating the protection granted to the applicant, having itself registered a combined trademark in 2011, , consisting of the company name and the colors yellow and blue, for service class 35, as follows: “Advertising; business management and administration; office functions; business management in connection with the procurement of goods for sale through petroleum products distribution stations; business management in relation to distribution of fuel, oil, gas and lubricants; trading of fuels, oil, gas and lubricants in their stations“.

The Defendant has also claimed that it has continuously used the blue and yellow colors and the name of the company that owns the gas station for over ten years, creating a clientele aware of the differences that distinguish it from the great distributor and especially pointed out the fact that due to positioning of the name of the gas station in a central place the risk of confusion among the clientele is non-existent. The Defendant also indicated that many stations are using the two colors (in various combinations) and can thus be concluded that they are industry-specific colors.

The defendant claimed that the registration of a trademark must confer protection for its holder against other competitors operating in the same market, in the sense of differentiating between competitors and avoiding the misleading of consumers. This matter should not instead be taken to an extreme, by creating a monopolization of a segment or characteristic of that market. A right must be exercised within the limits for which it was granted, and not in an abusive manner, as exercised by the Plaintiff and in no way against people who have acquired distinctiveness through a prolonged use of a certain form.

Therefore, in the above-exposed situation, we face a conflict between two entities holding trademarks registered under Law 84/1998 on trademarks and geographical indications, the common element of said trademarks consisting of the colors yellow and blue, each protection being granted for different combinations of the two colors.

The question raised is whether the Defendant’s trademark, at this level, may provide protection for the holder against competitors in the same market, as the two colors have become common in use among gas stations, and whether and to what extent the trademark infringes the acquired protection conferred to the trademarks held by the Plaintiff.

In the analysis of the facts, the Defendant argued that the method in which the two colors, yellow and blue respectively, are arranged in graphics used by fuel distribution stations should be taken into discussion and that the answer to the following questions must be analyzed: Did the Defendant copied the way in which the Plaintiff uses the colors? Can a distinction be made by the consumer between the two stations, or does a likelihood of confusion and association respectively exist? If yellow and blue color layout is totally different between the gas stations owned by the Defendant and the gas station owned by the Plaintiff and the Defendant even holds a trademark which contains the two colors, can the Defendant be prohibited from using its own trademark containing the colors yellow and blue?

The strategic element of the trademarks concerning this case is the color yellow used in oil and fuel distribution industry. Looking back to the oil industry of Romania, the “gas factory in Ploiesti” (Ploiesti Refinery) owned by Mehedinteanu Marin, the first of its kind in Romania, has started to function in early 1857, a refinery with primitive equipment, but which brought the color yellow to the forefront, the color being representative for flames and danger, symbolism used in even in the dyeing of pipes, as a means of warning.

In this context, which was adopted as a custom, a good portion of fuel distribution stations preceding the first refinery continued to use yellow above other shades of blue, green, red or black exterior graphics, as a means to indicate to the consumer that in that certain location fuel is distributed or services related to the oil industry are provided. In fact, blue is the color of the new diesel, also often used by gas stations.

In fact, the Bucharest Court of Law admitted the request filed by O.P. S.A., arguing that although it is a correct assertion that the Plaintiff cannot hold exclusive rights regarding the colors yellow and blue, it however appreciates that the Plaintiff’s right to exclusively use of the colors yellow and blue has been breached and gives a favorable solution for the Plaintiff, ordering that the defendant “cease all acts of use of the trademarks held by the Plaintiff in its business “(including the trademark consisting only of the 2 colors).

Given the court’s contradictory reasoning, as well as the held trademark, the Defendant M.S. S.R.L. appealed the Decision, which was settled by the Bucharest Court of Appeal, obtaining a favorable decision, as the Appeal was admitted and the Defendant kept its right to use the registered trademarks containing the colors yellow and blue in its commercial activity, with the mention of using them in a graphic that will not breach the figurative trademarks held by O.P. S.A.

This latter decision will thus further allow the possibility of using the rights conferred by the registered trademark held by the Defendant (the trademark consisting of the name of the gas , using the colors yellow and blue). The Defendant can therefore use the two colors, but in a layout different from those held by the Plaintiff O.P. S.A.

We appreciate the Court of Appeal’s decision as correct, given the fact that color-based figurative trademarks do not involve any inventive element, but more of an artistic, creative use of existing colors. It is difficult or nearly impossible to bring originality in terms of colors, without using a shade already seen in the business of another competitor, the more so in this case, as yellow and blue already form a language of their own in the oil industry.

In conclusion, as the Defendant’s trademark was chosen to identify a fuel station, the language and symbolism of the relevant products and services had to be kept, otherwise the risk of inducing the public in a serious error being imminent. The Plaintiff could not impose exclusivity in terms of yellow and blue colors, taking into account the fact that the two colors are common in the oil industry and the fact that the Plaintiff failed to prove acquired distinctiveness in terms of their use. However, the trademark consisting of the two colors held by the Plaintiff is still in force, leaving the question of what can be done with this trademark if it cannot be used to impose competitors to no longer use it.

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