MORE THAN FIFTY SHADES OF GREY: SINGLE COLORS, POSITION MARKS, AND THE SELF-CONTAINMENT CRITERION

Despite formal pronouncements in the European Union (EU) that “single-color” trademarks are, in principle, capable of registration, signs consisting of undelimited shades have not fared well in litigation over questions of validity. This has prompted commentators to suggest that there is an unwritten rule in the EU requiring color trademarks to be spatially delimited, resulting in many abstract, albeit distinctive, shades falling outside the realm of registrability. This article seeks to contribute to the current debate on color per se trademarks by offering another reason for the unsympathetic treatment of single colors—the Sieckmann “self-containment” criterion. From the dispute over Cadbury’s classic purple shade for its chocolate products to the recent Court of Justice of the European Union (CJEU) ruling on the registrability of hybrid shape-color trademarks in Louboutin, this article argues that the self-containment criterion has played an implicit role in driving the outcome of many EU color trademark cases but has not been sufficiently studied or acknowledged. This article further identifies an uncomfortable tension between the self-containment criterion and the CJEU’s ruling in Libertel, and offers some policy options to address this conflict.