Trademarks are a very valuable form of intellectual property because they are associated with quality and consumer expectations of a product. Trademarks distinguish the goods and services of one enterprise from that of others. It may include words, personal names, and designs, among others. A registered trademark is an asset that safeguards brand reputation and goodwill. Registration of a trademark in Ghana gives protection against the unauthorised use of a mark and allows a proprietor to sue for trademark infringement.
A registered trademark is valid for a 10-year period and may be renewed at a fee.
A proprietor that intends to register its trademark has two options:
- registration of a trademark with colour (“Colour Claim”); or
- registration of a trademark without colour (“Grayscale Claim”).
A Colour Claim is preferred where an owner of a trademark (“Proprietor”) wishes to protect a brand or product that has an associated distinctive colour. This type of registration is common where the trademark consists of a very simple design such as a commonly used geometric figure. Claiming colour in a trademark registration prevents other businesses in the same industry from using those claimed colours.
A Colour Claim requires that a trademark is registered with a reproduction of the trademark in the colour or colour combination sought to be protected and this protection is not extended to other colours. The Colour Claim must specify the exact colour(s) by reference to its code on an internationally recognised standardised colour coding system (“Colour System”) such as Pantone Matching System (PMS). This distinguishes the colour being claimed from other shades or hues of that colour. Vague descriptions of colour, and colours as known by the public, may be rejected in a Colour Claim as not distinctive and capable of distinguishing the trademark from that of others. Consequently, the precise colour and its code as indicated on a Colour System must be specified in the application for registration. For instance, it is not sufficient to indicate in a Colour Claim that a trademark is in the colour ‘red’ or ‘pale red’ and neither is it sufficient to reproduce the trademark in that red colour without specifying its precise colour code (such as, PMS Red 032) and further stating that the colour is being claimed. This is why a Colour Claim is generally seen as a limitation of colour.
Despite this limitation that claiming colour has, a Proprietor who has business competitors using similar variants of claimed colours may oppose the registration of that trademark on the ground that the public is likely to be confused by the trademarks' close resemblance.
A Grayscale Claim may be preferred as a simpler option that requires a trademark to be reproduced in “black and white”. It is more commonly used as it allows the use of the trademark in any colour(s) a proprietor wishes to associate with their brand. It generally offers broader rights and flexibility in usage without a restriction as to a specific colour with its precise code on a Colour System. This is the best possible protection where the design mark is distinctive already and the brand colours are not the central and distinctive feature of the trademark.
- Registering a trademark without colour offers broader rights and flexibility in usage. It requires a reproduction of the trademark in ‘grayscale’.
- Registering a trademark with colour enables a proprietor obtain protection against the unauthorised use of brand colours by business competitors. It however restricts the proprietor to use only those claimed colours on the trademark.