When a colour or shape is claimed by a rival: what to do first
Stop new orders that show the disputed colour or shape on packaging or products. Screenshot the rival's registration or claim letter, note the date it reached you, and route it to whoever holds the trade mark file before any reply is sent. A reply drafted without checking the registration record creates admissions that are hard to undo.
The legal basis
A colour or a shape can function as an EU trade mark once it is registered or, for a shape, once it is not excluded from registration under Regulation (EU) 2017/1001 (EUTMR). The same regulation governs opposition, invalidity, and infringement proceedings before the EU Intellectual Property Office and before national courts acting as EU trade mark courts. Whether the rival's claim stands depends on the actual scope of its registration, not on the general impression that a colour "belongs" to a market.
What changes in practice
Once a claim letter or an opposition notice arrives, a response deadline usually starts running. Missing it can convert a disputed position into an unopposed one. Before that deadline, the priority is establishing three things: what exactly is registered, since when, and for which goods or services. A colour claimed for one product category rarely blocks an unrelated one.
If your own supply chain uses a third party to package or brand the goods, the contract with that party matters at this stage. When a supplier refuses an indemnity in detail, the exposure from a rival's colour or shape claim can fall on you rather than on the supplier, and the contract terms decide who absorbs the cost of a change.
What to do
- Instruct whoever manages the mark portfolio to pull the rival's registration certificate and confirm the exact colour code, shape representation, and goods classes claimed.
- Confirm the date the claim was received and calculate the response window before drafting any reply.
- Check your own use: since when the colour or shape has been applied to your goods, and whether that use predates the rival's filing.
- Hold distribution partners to the current packaging pending advice. If a reseller signs terms you never saw, that agreement may already restrict your ability to change branding on short notice.
- Route the file to counsel before any public statement, redesign order, or settlement offer is made.
Who decides
| Forum | What it decides | Basis |
|---|---|---|
| EU Intellectual Property Office | Opposition and invalidity of the registration itself | Regulation (EU) 2017/1001 (EUTMR) |
| National EU trade mark court | Infringement, injunctions, and damages for actual use | Regulation (EU) 2017/1001 (EUTMR) |
| Customs authorities | Detention of goods at the border suspected of infringing the mark | Regulation (EU) No 608/2013 |
Which forum applies depends on what the rival has actually done: filed an office proceeding, sued, or lodged a customs application. Each forum applies a different test and moves on a different clock.
Where this splits
If the rival has only sent a warning letter, no deadline is formally running yet, and the priority is verifying the registration before replying. If an opposition or invalidity action has been filed at the office, a statutory response period is already open and missing it narrows your options. If customs has detained goods, the release clock is short and runs independently of any office proceeding. If your product is sold under a licence that extends into token-based loyalty or resale schemes, the question of where the offer targets several countries and its limits becomes relevant to how far the colour or shape claim can reach.
What this page does not resolve
This page does not establish whether the rival's registration is valid, whether your own use qualifies as prior use, or what a redesign would cost. Those questions depend on the specific file: the registration certificate, the goods classes, and the evidence of use on both sides. A separate assessment sets out what can be established from that file and on what basis; Asset in Austria explained shows how one such assessment is structured for a comparable asset type.
Verified
Checked against the consolidated text of Regulation (EU) 2017/1001 (EUTMR) and Regulation (EU) No 608/2013, current as of the date this page was last reviewed. No case-specific figures or article numbers beyond these two instruments are cited on this page; a file-specific reading requires the actual registration and claim documents.
Related situations
A rival's colour or shape claim often runs alongside a separate line of attack on the mark's validity. See When a mark is challenged as descriptive and its counterpart for that scenario.
FAQ
What is the first step when a colour or shape is claimed by a rival?
Freeze packaging changes, secure the claim letter with its date, and pull the rival's registration record before replying.
Which deadline is already running?
None, until a formal opposition, invalidity action, or customs detention has been filed or notified. A warning letter alone does not start a statutory clock, but calculating the deadline the moment a formal filing arrives is essential.
Who decides, and on what evidence?
The EU Intellectual Property Office decides validity of the registration; a national EU trade mark court decides infringement; customs decides border detention. Each relies on the registration certificate, the goods classes, and evidence of actual use.