Laboratorios Le Roy S.A. de C.V., the company holding the trademark, recently applied to register the color yellow as a trademark, declaring that it has used it since 1974 to distinguish bandages for dressings. The IMPI did not issue any opposition, denial, or requirement for proof of use; it simply granted the registration.”
The registration of the color yellow as a trademark could be controversial if we assume that none of the competitors’ products may use the yellow color shown in the image or similar Pantones.
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Journalists have already reported on this, with the newspaper Reforma running the headline: ‘ “IMPI Grants Company the Color Yellow Despite Being Prohibited.”. It is important to clarify some points regarding IMPI’s rationale for recognizing the color yellow as a registered trademark to distinguish bandages for dressings (according to the RAE, a dressing is defined as a curative or protective material applied to a wound or injury).
Truth be told, and to avoid any confusion, there are two facts that reduce the magnitude of the controversy:
- Le Roy’s trademark exclusivity is limited only to bandages for curative materials (McDonald’s and other yellow-branded companies do not need to worry about removing this color from their logos);
- There is no malice in IMPI’s approval of the registration grant because the new Law recognizes acquired distinctiveness (commonly known in trademark law as Secondary Meaning).
What is Acquired Distinctiveness or Secondary Meaning?
The so-called Secondary Meaning was recently introduced into Trademark Legislation and refers to a mark that, through its use, acquires distinctiveness, despite not meeting the primary requirement that a mark must generally have in order to be registered, which is distinctiveness.
The promotion, sales, and advertising of a product or service are important factors for demonstrating the use of a mark over time to substantiate its registration under Secondary Meaning.
Thus, marks that would ordinarily not have obtained registration due to a lack of distinctiveness, such as a color, a letter, or even descriptive terms, can be registered based on Secondary Meaning if they have been used.
The registration of marks recognized under Secondary Meaning or Acquired Distinctiveness is highly debated in the field of Intellectual Property, as the granting of exclusivity often raises questions about whether the registration of marks with descriptive, generic words, or even a color or a letter limits the competitive landscape for their rivals in the market.
The Real Controversy
The real controversy lies in the legal effect of the recognition of registered trademarks that restrict the availability of products or services in the market for competitors of the holders of those trademarks.
In other words, to put it simply in Spanish: the recent acknowledgment of the Law on Secondary Meaning grants its owner (the correct term is ‘holder’) the exclusive right to trademarks that restrict the offerings of competitors in the market by recognizing a right over distinctive elements that they cannot use to market their products or services.
Secondary Meaning is an exception to the principle of freedom of commerce established in the Political Constitution of the United Mexican States, which serves as the guiding principle of the national capitalist economy. That is the real controversy!
The author of this article has argued in various publications that, contrary to what many attorneys in the field have stated in forums and even written in legal doctrine, the fact that the State grants exclusivity of a registered trademark to its holder, originates from the intent to promote economic competition rather than the unrestricted right of the merchant or industrialist, as some colleagues assume.
If you are enthusiastic about the field of trademarks and wish to discuss my statement, you may read Article 28 of the Constitution and notice that trademarks are omitted between the recognition of copyright and patents.
Yes, trademark law is not provided for in the Political Constitution of the United Mexican States, and this is not an oversight by the Legislative Branch; nor can one be bold enough to insert words into the constitution where none exist.
As often happens in Mexican legislation, since Secondary Meaning is an imported concept, foreign reasoning provides guidance when reviewing the rulings that have resolved these types of disputes arising between registered trademarks under this figure and the potential infringing conduct of competitors offering products or services with registered trademarks that limit their offerings.
United States: The Precedent of Color as a Trademark
Qualitex Co. marketed dry ironing board covers in a gold-green color and even registered the color with the USPTO in 1991 at the same time it sued Jacobson Products Co. for alleged infringing conduct for selling its own pads in the same color.
At first instance, the District Court ruled in favor of Qualitex based on the fact that the trademark had been registered.”
Subsequently, the Ninth Circuit Court of Appeals overturned the ruling on the grounds that the color itself could not be registered as a trademark.
Finally, the Court’s reasoning, by unanimous vote, was as follows:
Based on the definition of a registered trademark under the Lanham Act, colors could not be considered as descriptive marks because a color does not automatically evoke a connection with any product in and of itself. However, it may acquire a secondary meaning over time through its use in the market.
In this way, a color could fulfill the primary purpose of registered trademarks: to identify the origin of a particular product.
Regarding the impediment to the registration of descriptive trademarks (functionality doctrine in the United States), it was dismissed, stating that it is not an impediment to determine that the color is registrable as a trademark, since a characteristic of the product is only descriptive if ‘it is essential to the purpose of the product or if it affects the cost or quality of the product.
What is important to highlight in this case is:
- Marks that have acquired distinctiveness can be registered if they do not evoke the characteristics of the product or service;
- Not all colors can be registered as trademarks, especially primary colors;
- A color meets the legal requirements to be a registered trademark if it represents a symbol that distinguishes the products or services of a company and, above all, if it identifies their origin;
- The function is not relevant for granting its registration.
The color yellow in itself lacks originality.
The design of the Chupa Chups brand (another famous yellow brand) to distinguish lollipops is the work of Master Salvador Dalí. Who could doubt that the design holds copyright?
Thus, as an exception and privileging the use of a mark that, in principle, lacks distinctiveness, it acquires distinctiveness through use over time, thereby obtaining the possibility of being registered and securing exclusivity to distinguish the products or services it offers.
The originality of a trademark is not a determining factor for registration; in the case of Le Roy, the color yellow should not be considered as a copyright but rather as a registered trademark, as determined by the IMPI.
Unlike Intellectual Property rights (Copyright), trademark designs do not necessarily have to be original, because their function is different and they are intended for commerce and industry.
The expression ‘not necessarily’ is used because a significant number of trademarks must indeed be protected by Copyright.
Possibly, the confusion arises from the fact that copyright registration is declarative and not constitutive, leaving an open space for doubt.
