Color Combination Applied to Pipes Considered Unregistrable

Ferva SA filed several trademark applications to protect the color combination (yellow background with black lines) it applies to its products (tubes and their accessories). However, Industrias Saladillos SA opposed to the registration, because the trademarks Ferva sought to register lacked distinctive capacity, as required in article 1 of the Trademark Law No. 22362.

Since it was not possible to settle the matter through mediation, Ferva filed a lawsuit against Industrias Saladillo, seeking that the oppositions be declared groundless.

The first instance court decided that 20 of Ferva’s 22 applications were in the public domain, as evidenced by the response of the Argentine Gas Regulatory Agency (ENARGAS). Consequently, they did not meet the requirements of distinctiveness and relative novelty necessary to be registered as trademarks.

Ferva appealed the decision, but Chamber II of the Federal Court of Appeals in Civil and Commercial Matters upheld the first instance decision. The court especially considered article 1 of the Trademark Law, which specifically requires that the signs subject to registration must be novel, at least relatively, and have both intrinsic and extrinsic distinctive capacity. In this sense, the court pointed out that for a color combination to be registrable, it must be unusual and not of common use. 

The court of appeals agreed with the trial court argument that the color combination Ferva sought to register was in the public domain and, therefore, lacked distinctiveness. The court added that the color combination applied for is expressly established in a regulation issued by ENARGAS, which states that transportation pipes for natural and fluid gas must be yellow with the alternative of a black background with yellow stripes.