When a colour or shape is claimed by a rival: what it costs to be wrong

A rival's claim to a colour or a shape used on your packaging or product does not settle itself. Ignore it, and continuing sales after a formal notice can turn an ordinary dispute into wilful infringement, with an injunction, destruction of stock, and legal costs added to whatever the mark itself was worth.

Basis

A colour or a shape can be registered and enforced as an EU trade mark under Regulation (EU) 2017/1001 (EUTMR). The same act governs opposition, cancellation, and infringement proceedings once a mark is on the register. If the rival's claim reaches the border — a shipment stopped before it clears customs — the relevant framework is Regulation (EU) No 608/2013, which sets the mechanism for detaining goods suspected of infringing a registered right.

These two acts do different jobs. The first decides whether the colour or shape is protectable and whether your use conflicts with it. The second decides whether goods physically move.

Practical consequence

Once a claim is made — by letter, by opposition filing, or by a customs notification — three things change at once. Continued use stops being neutral: it becomes evidence of knowledge if the dispute later reaches a court. Your own filing plans for the same colour or shape are frozen until the conflict is resolved. Any packaging run, licence, or distribution agreement tied to that colour or shape carries a live risk that did not exist the day before.

None of this depends on who is right. It depends on who acts first and who can prove use.

What to do

1. Stop new commitments. The person who signs off packaging or marketing orders should pause any run that repeats the disputed colour or shape until the claim is assessed.
2. Collect use evidence now. Whoever holds sales records, invoices, and dated packaging samples should assemble them before memory or documents disappear — this is what proves distinctiveness acquired through use, if that is the argument available to you.
3. Check the register. In-house counsel or an external adviser should confirm whether the rival's colour or shape is actually registered, and in what form — a plain colour claim, a colour-plus-position claim, or a three-dimensional shape mark carry different defences.
4. Review supply and licensing paper. If the disputed element sits on goods made by a third party, the same file should be checked for When a supplier refuses an indemnity in practice — the answer changes who carries the cost of a wrong call.
5. Respond within the stated period. Whoever received the notice or opposition must answer inside the window it names — silence is read as acceptance in most forums, not as a neutral holding position.
6. Decide on settlement before escalation. A negotiated limitation of use is usually cheaper than a ruling either way, and a decision-maker with authority to agree it should be identified early, not after the first hearing.

Who decides

Developments

Which fork applies changes what "wrong" costs.

If the rival's claim is an opposition against your own pending application, the exposure is limited to that filing — you can withdraw, amend, or argue acquired distinctiveness without touching existing stock.

If the claim is an infringement action against goods already on the market, the exposure includes the goods themselves, any licence built around them, and — where a licence outlives the product it was written for — the situation described in When the contract term outlives the product: what it costs to keep paying for a mark you no longer use.

If the colour or shape appears on a digital product or a tokenised offering rather than a physical one, the same conflict can surface mid-campaign rather than at a border, closer to When the issue is paused mid-sale: what it costs to stop a launch than to a customs seizure.

Limit

This page does not decide whether your specific colour or shape is registrable, nor what evidence is sufficient to prove acquired distinctiveness in your case — that assessment depends on the mark, the market, and the file. It does not set out litigation cost estimates or timeframes specific to one jurisdiction; those vary by forum and by how contested the case becomes.

Sources and limit

What can already be established for a given asset and jurisdiction, ahead of any dispute, is a separate question answered through Asset in Liechtenstein and the deadline rather than through this page.

Verified: current at the time of publication. Primary sources: Regulation (EU) 2017/1001 (EUTMR); Regulation (EU) No 608/2013.

Related publications

A neighbouring dispute — where the challenge is not the colour or shape itself but whether the mark is merely descriptive — is set out in When a mark is challenged as descriptive in detail.

FAQ

What is the first step when a colour or shape is claimed by a rival?

Pause any packaging or marketing run that repeats the disputed colour or shape, and start collecting dated use evidence before the file grows old. Deciding who is right comes after, not before, this step.

Which deadline is already running?

Whatever notice or filing started the dispute — a warning letter, an opposition, a customs notification — names its own response period. That period starts on receipt, not on the day you read it carefully. If the length is unclear, ask the sender in writing rather than assume silence buys time.

Who decides, and on what evidence?

The EUIPO decides registrability and conflicts between marks under Regulation (EU) 2017/1001 (EUTMR); a national court designated as an EU trade mark court decides infringement and damages under the same act; a customs authority decides whether a shipment stays detained under Regulation (EU) No 608/2013. Each forum works from the evidence placed before it — use records, registration certificates, and the notice itself.

— Ruta Kavaliauskaite, AURELIS