Trademark protection for Wimbledon Tennis’s signature colours

Wimbledon Championship or simply known as Wimbledon, is one of the oldest and most prestigious tennis tournaments in the world since 1877 when it was first inaugurated. Its parent organisation, The All England Lawn Tennis Club (further referred to as “the Club”) has previously trademarked the word ‘Wimbledon’ and also has trademarks has several other signs related to it such as the crossed rackets logo. However until 2016 the Club did not have a trademark for Wimbledons signature colours of dark green and purple. Even though those specific colours have been associated with Wimbledon for several decades, there was no trademarks protection for it and hence until 2016 those colours were exploited by other companies. Trademark plays an essential part in branding any company and giving it a separate identity and protecting its signs from exploitation from competitors. It prevents consumers from getting confused between two similar products and provides a sense of security to sponsors. However trademark for colours have very rarely been given especially in the UK. They are only given if there is extensive proof that the specific colour or combination of colours when seen by the general public will be associated with that brand or company.  The colours are required to have a secondary meaning to them in order for them to be protected by a trademark. There are only a few trademarks for colours given such as red soles of Louboutin.

In 2016 the Club filed for a trademark for its signature colours of dark green and purple. They applied for trademark protection for the colours because in the past these colours were used by fake ticket selling websites to mislead customers. These websites did not use Wimbledons trademark to sell fake tickets however used its signature colours since these colours have been associated with Wimbledon for over a hundred years. Due to these fake unauthorised websites, Wimbledon’s brand name and image was being affected however since the colours were not protected under the trademark law in the UK there was not much the Club could do. The only remedy they had was that under law of torts known as passing off. However this remedy did not provide the level protection the Wimbledon needed and the Club had already spent a lot of money on several passing off law suits and would have to continue to do so if the colours were not given trademarks protection. Hence finally in 2016 after decades the Club decided to file for trademark for its colours. The registration process to acquire this trademark was not easy for them either. Their application had already once been rejected and they were reapplying for in 2016. They had to tedious job to prove why they should be granted this trademark. They had to first prove that the colours were associated with the history of Wimbledon. As the official Wimbledon website explains, the “present colours — dark green and purple — were introduced in 1909 following the discovery that the previous Club colours of blue, yellow, red and green were almost identical to those of the Royal Marines”. The club also conducted a survey to prove that consumers associated the colours dark green and purple with the Wimbledon Championship. This surgery showed how if these colours were applied to products such as tennis rackets or t-shirts it would mislead consumers into believing that those products were associated with the Wimbledon Championship when in reality they are not. This would not only result in an unfair advantage to other companies, it would also result in misrepresentation and hamper the brand and reputation of Wimbledon.  The UK Intellectual Property Office (UKIPO) after proper deliberation granted the Club, a trademark for the signature colours of dark green and purple. The marks registered are (1) UK Commerce Mark Registration No. 03095405: “The mark is within the type of a stripe consisting of the colour inexperienced (Pantone No. 349 C) adjoining to the colour purple (Pantone No. 268 C). The 2 stripes are of equal proportions and the inexperienced stripe is on the left of the purple stripe when offered vertically.”(2) UK Commerce Mark Registration No. 03097108 : “The mark is within the type of a horizontal stripe consisting of the colour inexperienced (Pantone No. 349 C) adjoining to the colour purple (Pantone No. 268 C). The 2 stripes are of equal proportions and the inexperienced stripe is above the purple stripe.” The marks were registered in the classes Class 38 (Telecommunication or broadcasting), Class 16 (Printed publication of books, stationery and diaries, all relating to tennis.), Class 25(Tennis skirts; tennis shorts; tennis sweaters; hats, scarves, wristbands, socks, all being tennis clothing.), Class 41( Producing, organising and staging tennis competitions;)

Conclusion

Even though getting a trademark for a colour is difficult, Wimbledon proved that their signature colours were distinctive to them and protection was necessary to prevent misrepresentation. For example since these colours are now protected by trademark no fake ticket selling websites can use these colours to mislead costumers. Hence trademark protection for colours is just as important as for signs and logos of brands as some colours are intrinsically associated with big brands or companies and hence this protection should be provided to them.

Author: Muskaan Halani, a  law student from SVKM’s NMIMS (Navi Mumbai), in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.