Court of Audit prohibits the trademark registration of an isolated color

By Berkemeyer Attorneys & Counselors

In 2007 Paraguayan automobile association Touring y Automóvil Club Paraguayo (Tacpy, by its Spanish acronym) applied for the trademark registration of "Grua Tacpy" to name a roadside assistance service contemplated in Class 39 of the International Nice Classification: Transport; packaging and storage of goods; travel arrangement. The application consisted of a black and yellow logo with the name of the service and a tow truck.

However, the National Office of Intellectual Property of Paraguay rejected the application and later affirmed it in second instance, based on the grounds that the applied trademark did not complied with Article 2 of Trademark Law (Nº1294/98): a trademark cannot be granted to common forms or packagings of a product or service. "Although the form of the logo meets the law requirements as to its letters, the form of a motor vehicle is not an original creation. Therefore, the registrant can not trademark or include in its trademark something that does not belong to him", stated the ruling.

Tacpy contended that the rejected application never claimed as an original creation the form of the tow truck or any of its components, but "only the visual appearance and general image" of the tow truck, which characteristics signify the source of the service to consumers.

"Tacpy aims to protect its trade dress of black and yellow tow trucks that can been seen all across Paraguay, an image that constitutes the identity brand of the company. In the same way that the trademarks of Repsol or Shell do not protect beams, structures or fuels, we do not intend with this trademark application to protect tow trucks or any of its components. What we claim in exclusivity is the combination and arrangement of colors used in the tow truck", argued the company, who in 2014 applied to the Court of Audit to review the Paraguayan IP Office rulings.

But in a decision issued in November 2015, the Court of Audit affirmed the previous rulings. It rested its grounds by looking at the general image and concluding that the form of the motor vehicle "does not have enough merits that make it different to other motor vehicles of the same size and that provide roadside assistance services". Even more, the Court stated that the alleged trade dress could only be recognized by consumers through "the name of the company" that is printed on both doors of the motor vehicle.

"Consumers would never notice the difference if the name of another automobile association is printed on both doors", therefore the applied trademark "is distinguished because the name of the company", not because "the combination and arrangement of colors", says part of the decision. It adds that in case the name was deleted only the yellow color would remain, and Article 2 of Trademark Law prohibits the trademark registration of an isolated color. If "the plaintiffs arguments were to be sustained, we would be enabling a monopoly in its favor", being the only company in the market providing roadside assistance services with a trademarked logo of common yellow tow trucks.