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Importance and Challenges of Protecting Colour Marks in India

April 18, 2022

By Ananyaa Banerjee and Sandhya A. Parimala

Colours create a longer lasting effect than a black and white combination and many entities prefer to market or advertise their products with the use of colours. Many brands have adopted a specific colour style for their products, and the general public recognizes the brand simply by looking at the colour of the product before even reading the brand name. For example, any purple colour chocolate is instantly recognized with Cadbury even though the words “Cadbury Chocolate” are written in any language of the world. Therefore, great importance and attention is given to colours, as they are more appealing and have great effect on the brand recall and product sales. The colours and their combination play a vital role and are useful to consumers who do not understand the traditional trade marks (such as word marks) either due to illiteracy or due to the fact that they are written in an unknown language.[1] However, there comes a question whether a colour is eligible to be registered as a trade mark, owing to the fact that any colour is common and might not be distinctive. However, many countries including India have recognized colours as a trade mark and allowed registrations of colour marks if they satisfy some requirements such as distinctiveness by way of use.

Position of Colour Marks in different Jurisdictions

Position of Colour Marks in the European Union

According to the EU Law, a colour mark is a trade mark that consists exclusively of a single colour or combination of colours without contour.[2] Therefore, the EU recognizes both the registration of a single colour as well as a combination of colours, though it has provided a strict criteria for registration. To be eligible for registration, a colour should acquire distinctiveness and must be able to be represented in the application for registration.[3]

According to the guidelines established by EUIPO, a colour mark must be a representation of colour/colours without contours in one single .JPEG file or on one single A4 sheet, and for representing a colour combination the reproduction must show the systematic arrangement of the colour combination, and is mandatory to file a reference to an internationally recognized identification codes such as Pantone, Rex or Hal.[4] References to colours in words in the mark description are accepted.[5]

According to Part B, Section 4, Chapter 3 of the EUIPO’s Guidelines for Examination, a colour should be distinctive either if applied to the goods or their packaging, or if used in the context of delivery of services.[6] Further, according to Part B, Section 4, Chapter 3 of the EUIPO’s Guidelines for Examination, examination of distinctiveness of a colour combination should be based on the assumption that the colour combination appears on the goods or their packaging, in a way that accords with the representation, or in advertisements or promotional material for the services.[7]

Colour marks ca be of two types:

Single Colour Marks

      1. EUIPO has stated that, in order to prevent any monopolization of the colours, and considering the fact that consumers may not identify a trade mark solely on the basis of a single colour, the person seeking registration of a single colour must prove that the mark is unusual or striking in relation to these specific goods or services. Further, if a single colour is found to be commonly used in the relevant sector and/or serves a decorative or functional purpose, the same is not entitled for registration as a trade mark.

    [8]

In the case of Libertal Group BV v. Benelux Markenbureau[9] the court held that the graphical representation by the applicant contained an orange rectangle, verbal description and the word ‘orange’ without reference to any colour code.[10]  Further, the court held that while assessing the distinctive character of a colour mark, all the circumstances of the case must be taken into consideration and in particular any use which has been made of the mark. In this case, the court has acknowledged that a colour per se is eligible for trade mark protection. However, it stated that it cannot simply be represented on a paper, and stated that a sample of colours combined with description in words (according to internationally recognized identification code of colours) would constitute sufficient graphical representation.[11]

Some of the examples of single colours registered in the EUIPO are: (1) Victorinox AG- RAL 3003 (brownish-color)[12]; (2) Kraft Foods Schweiz Holding GmbH – Lilac/Violet (purple-color-shades)[13] for Milka Chocolates; (3) Red stripe placed longitudinally along an item of footwear partly covering the rear area of the sole and partly the rear area of the item of footwear (footwear Sketch)[14].

Combination of Colours Marks

      1. The law regarding the registration of combination of colours is slightly lenient as compared to that of single colours on account of the distinctive pairing. The colour combinations are liable to be rejected in the following circumstances: (1) If the colour is a decorative element of the goods or comply with consumers request, irrespective of the number of colours concerned; (2) When a colour is the nature of the goods; (3) A colour is usual; (4) A colour indicates a particular characteristic of the goods; (5) If the colour combination is already existing the market.

    [15]

    It is pertinent to note that since memorizing a high number of different colours and their sequence would be difficult, the applicant may consider to apply as many less colours as possible so that it can be more distinctive.

In the case of Heidelbereger Bauchemie[16] the applicant had sought registration for blue and yellow colour (upper part blue and lower part yellow), comprised in a rectangular piece of paper. In this regard, the court held that the combination of the said colours has to be specific and must be systematically arranged by associating the colours in a predetermined and uniform way.[17]

Some examples of combination of colours registered as trade marks in the EUIPO are: (1) The Black & Decker Corporation – black and yellow (yellow-blue-color-combo)[18]; (2) Bayerische Motoren Werke Aktiengesellschaft – blue, violet, red (blue-violet-pink-mix-color)[19]; (3) Blue and silver for Red Bull (red-bull-shape)[20].

Position of Colour Marks in the US

Even the United States has recognized the registration of single as well as combination of colours as trade marks. In the United States, the colour mark registration depends upon the manner in which the proposed mark is used, as this would limit unlimited number of marks being claimed in a single application. Further, since the colour marks are not inherently distinctive, the applicant of the colour mark is required to prove that the mark has acquired distinctiveness under §2(f) of the Trade Mark Act, 15 U.S.C.  §1052(f) and that the mark is not functional.[21]

In the case of Qualitex Co. v. Jacobson Prods Co.[22], the green-gold colour used on the dry cleaning of press pads were held to be protected as a trade mark as the colour has acquired secondary meaning. The Hon’ble Supreme Court of United States further held that a colour alone may sometimes meet the basic legal requirements for a trade mark, and when it does, there is no rule that prevents colour from serving as a mark.

Further, the burden of proving that a colour mark has acquired distinctiveness is substantial.[23] Since the commercial impression of a colour may change depending upon the object to which it is applied, the applicant while submitting the evidence of acquired distinctiveness may show that the consumers recognizes that particular colour only for that product and none else.[24]

Further, a colour mark cannot be registered under the Principle Register if the colour for which registration is sought is functional in nature i.e. if it yields a utilitarian or functional advantage.[25] In the case of In re Florists’ Transworld Delivery Inc.[26] it was held that the black colour for floral packaging is functional as there was a competitive need for others in the industry to use black in connection with floral arrangements and flowers to communicate a desired sentiment or occasion, such as elegance, bereavement, or Halloween.

In the U.S., the law states that an applicant may claim protection only to those elements which make a separate commercial impression. Therefore, colour of the words or designs apart from the words/designs themselves would not be registerable. However, the colour of a background material in which the words or designs are present is eligible for registration.[27] Further, while applying for a colour mark, a colour drawing should be accompanied by a colour claim naming the colours that are a feature of the mark and a separate statement naming the colours and describing the position of the colours and how they are used.[28] The drawing should exactly represent how the mark is being used and the object on which the colour is represented should be represented in broken or dotted lines.[29] The applicant for a colour mark must submit a specimen showing use of the colour either with an amendment to allege use or a statement if use.[30]

It is pertinent to note that, if a person is filing a trade mark without a colour claim, then the colours appearing in the mark should not be mentioned in the description, as it would be misleading and depict that the mark for which registration is sought is a colour mark. However, a description of a mark may contain the colours black, white or grey (if the said colours are present in the mark), provided the applicant states that colour is not claimed as a feature of the mark. This is usually for the cases where the colours black, white and grey are used for indicating certain areas of the mark which are not part of the mark.[31]

Some of the examples of colour marks registered in the United States are: (1) Colours orange and sky blue of the razor cartridges of The Gillette Company LLC (The Gillette Company LLC )[32]; (2) Tiffany’s robin egg blue boxes (box-peel)[33]; (3) Colour copper applied to the top one-third of a battery (battery-vector)[34].

 

Position of Colour Marks in India

The Trade Marks Act, 1999 recognizes that a colour significantly adds to the distinctiveness of a trade mark. The expression “trade mark” in Section 2(1)(zb) is defined to include “combination of colours”.[35] Further, even Section 2(1)(m) of the Trade Marks Act, 1999[36] includes the term “combination of colours” in the definition of a “mark”. The Act does not specifically provide for the registration of a single colour as a trade mark neither does it expressly prohibit the registration of such marks. This establishes that Indian Law recognizes colours as trade marks.

The draft Trade Marks Manual states, in order to constitute a trade mark, colour/combination of colours must be distinctive and capable of distinguishing the goods or services of one trader from others.[37] According to the draft Trade Marks Manual, a single colour may be registrable as a trade mark if it is very unusual and peculiar in a trade and is recognized by the traders and consumers alike that it serves as a badge of origin for that class of goods.[38] The Indian Trade Mark Registry allows the registration of a single colour as a trade mark though it is done only in exceptional circumstances. Usually an application for a single colour is liable for an objection under Section 9(1)(a) of the Trade Marks Act, 1999.[39]

Further, even combination of colours are registrable as trade marks, though the same depend upon the uniqueness and how they are used. If the colours are presented as a figurative mark, then as few as two colours could be accepted; but if they are simply the colours of the packaging of the product they are less likely, prima facie, to indicate trade source. When applications consist merely of colours applied to the goods or their packaging, it will be necessary to consider how unusual the colour combination is in relation to the goods and whether, prima facie, the combination is likely to strike the relevant consumer as an indication of trade source. Further, the applicant is required to prove that the trade mark has acquired distinctiveness.[40]

For registering a colour trade mark, the applicant is required to claim the colours for which registration is sought for, with the exact description of colour combination as per International Classification System of Colours and the application must also consist of a description which should state precisely of what the marks consists of and how the description relates to the representation.[41]

Further, Section 10 of the Trade Marks Act, 1999[42] talks about limitation of colour. According to this Section, a trade mark may be limited by any combination of colours either wholly or partly, and the courts are required to decide the registrability basing on the distinctiveness of such colours. Further, if a trade mark is registered without any limitation of colour, it shall be deemed to be registered for all colours.

Some of the examples of colour marks registered in India are as follows:

Colour Trade Mark Application Number Graphical Representation Applicant Application Date
COLOUR MARK 1394234 brown-shape-color VICTORINOX AG October 19, 2005
MAGENTA COLOUR LABEL 1462270 pink-color-shades DEUTSCHE TELEKOM AG June 19, 2006
COLOUR COMBINATION 4648850 violet-golden-color TATA SIA AIRLINES LIMITED September 10, 2020
DEVICE 1922048 device-img CHRISTIAN LOUBOUTIN February 15, 2010
COLOUR LOGO 2816469 color-logo AMIT September 22, 2014

 

It can be observed that even the Indian judiciary has expressly protected the combination of colours as trade marks. In the case of Deere & Co. & Anr vs. Mr. Malkit Singh & Ors[43], the Delhi High Court granted protection to the plaintiff’s green and yellow colour combination used uniquely on its tractors manufactured for agricultural use on the basis of reputation, distinctiveness and instant source of identification of plaintiff’s products, more so as such colour combination was in use for 100 years and the public at large had come to associate the yellow wheels and green body with Deere tractors (green-yellow-color-shades,green-tractor-img).

Also, in the case of Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd.,[44] the court passed an injunction against Anchor Company from using the “red and white” colour combination of Colgate. The court acknowledged the colour combination as a part of trade dress and provided protection to Colgate from any infringement.

Colgate-toothAnchor-toothpaste
For colour marks, the criteria of graphical representation can be easily fulfilled by providing the colour combination used for the product. However, it becomes important to prove the distinctiveness of the mark and its capability of distinguishing the goods of one trader from those of another. From the above cited cases it is sufficiently clear that marks with unique colour combination are protected under the trade mark law.

It is pertinent to note that, even though single colour trade marks are registered by the Trade Marks Registry in India, we see that the judiciary in cases is still of the opinion that since the Trade Marks Act, 1999 does not expressly provide for the registration of a single colour as a trade mark as opposed to combination of colours, and therefore a single colour mark is not eligible for protection in India. The Delhi High Court in Christian Louboutin v Abu Baker[45] refused the trade mark of red colour on the sole of heeled shoes on the point that the mark was just consisting of a single colour red which is invalid as per the definition of a mark under Section 2(1)(m) of the Trade Marks Act, 1999 as it requires a mark to be a ‘combination of colours’ (however, this judgment was set aside in the appeal and it was held that the Single Judge cannot determine the registrability of a single colour as a trade mark at the very first hearing, and that the Single Bench has to determine the registrability on basis of pleadings and evidences).[46]

However, the Hon’ble Delhi High Court has itself previously in the case of Christian Louboutin Sas v. Mr. Pawan Kumar & Ors[47] held that the red sole of the shoes of Christian Louboutin is well-known. Furthermore, the blue colour of Prachute Oil bottle was also granted protection by the Delhi High Court.[48] This gives us two contrary opinions by the same court with respect to registrability of a single colour mark.

However, according to Section 30(2)(a)[49] of the Trade Marks Act, 1999, a third party cannot be stopped from manufacturing or selling goods with the same characteristics, if the trade mark for which registration is sought is itself the characteristic of the goods. In the case of single colour trade marks, the single colour for which the registration is sought would become the one and only character/feature of the goods. Therefore, no monopoly can be claimed for the same. In that case, even if a single colour is registered as a trade mark, no enforcement action can be taken against the third parties if a similar trade mark is being copied as the use of the said mark in most circumstances would indicate the characteristics of the goods/services. This creates further ambiguity with respect to the registrability of a single colour mark. Furthermore, there is always a problem of proving the distinctiveness of a colour mark (especially single colour marks). This can be overcome by adopting and using a combination of colours.

This is also when the importance of a position mark, that is, registering a colour with respect to a particular position in the product would be helpful. For example, the red colour for Christian Louboutin is protected only for the outside sole of their shoes which is depicted as shoes-img . This explains that, whenever any person comes across a red colour sole shoe, they would certainly associate it only with the brand Christian Louboutin. This makes it easier for the applicant to prove the distinctive character of the colour, without claiming a monopoly over the colour as the same is not used for their entire product but only for a particular position.

Another example depicting the importance of registering a colour mark in a specific position is the three stripes on the Adidas shoes. The three black/white stripes (adidas-shoes) at the two sides of the shoe are distinctively associated only with the Adidas brand. This is because of the peculiar placement of the black/white stripes on the shoes. Therefore, any other shoe company using the three stripes with white/black colour would give an impression that the same is associated with Adidas, and in these situations, Adidas may claim an infringement action against the shoe company.

Therefore, a specific colour placed in a specific position on the product is probably more likely to stay on the minds of the consumers and creates a separate commercial impression as a strong trade mark.

Challenges faced in Protection of Colour Marks in India

The challenges that are faced by the brand owners who want to register colour marks are:

Determination of non-functionality and distinctiveness of a single colour mark:

Looking at the practicality, a single colour per se cannot determine the distinctiveness or origin of a product. Therefore, such kind of trade mark applications might face serious objection under Section 9(1)(a) of the Act due to lack of capacity to distinguish and also the issue of anti-competitiveness coming into picture if a single colour is being granted registration, as this would restrict other brand owners from completely using the colour and there might not be any colour left for the other brand owners to use for their trade. Furthermore, for a single colour to be registered as a trade mark, it should be proved that the said colour has acquired distinctiveness by way of use with respect to the goods/services applied for. This means that a proprietor of a single colour mark cannot use the same as a functional aspect and register the colour mark on a proposed to be used basis, and by the time the distinctiveness is acquired, the colour may be claimed by some other third party.

However, it is interesting to note that, ironically, the Trade Marks Registry in India has allowed registration of single colour marks even on a proposed to be used basis.

chart-img

This shows the ambiguity present in determining the registrability of single colour marks

Issue of free competition

Since the availability of colours/colour combinations are restricted and shall certainly get exhausted after a certain point of time, there occurs the issue of unfair competition. Once a single colour/combination of colours gets registered, no other party shall be entitled to claim rights over the said colour for similar products. This would create a restriction for other parties to depict their products by way of colours, thereby causing a hindrance to free competition. In such a case, the same colour combination for different goods / services may be allowed.

Conclusion

Colour in trade mark may act as a business strategy, as right choices in colour of a trade mark adds up to the brand value of the product, which may intensify its audience interest. Colour trade mark not only adds up to the brand value of a product but also leaves a lasting impression on its audience. Even though the registration of a colour marks appears to be difficult, especially for single colour the Trade Marks Registry is allowing colour marks to be registered as trade marks. With the evolvement of law in this regard, the registrability of colour marks may also increase.

Sandhya Parimala, Junior Associate at SSRANA has assisted in the research of this article.

[1] “Single Color Mark: Its Registrability in the United States and the United Kingdom”. Available at: http://www.legalserviceindia.com/articles/collour_marks.htm last accessed on January 19, 2022.

[2] https://guidelines.euipo.europa.eu/1803468/1786113/trade-mark-guidelines/9-6———–9-3-6-color-marks

[3] Color marks: Still a grey area? Available at: https://www.lexology.com/library/detail.aspx?g=f63e46fe-4c5d-405f-9024-3980de00ca17 last accessed on January 19, 2022.

[4] https://guidelines.euipo.europa.eu/1803468/1786113/trade-mark-guidelines/9-6———–9-3-6-color-marks

[5] https://guidelines.euipo.europa.eu/1803468/1786113/trade-mark-guidelines/9-6———–9-3-6-colour-marks

[6] Part B, Section 4, Chapter 3 of the EUIPO’s Guidelines for Examination: Where colors or color combinations as such are applied for, the appropriate examination standard is whether they are distinctive either if applied to the goods or their packaging, or if used in the context of delivery of services. It is a sufficient ground for a mark to be refused if the mark is not distinctive in either of these situations. For color combinations, examination of distinctiveness should be based on the assumption that the color combination appears on the goods or their packaging, in a way that accords with the representation, or in advertisements or promotional material for the services.

[7] https://guidelines.euipo.europa.eu/1803468/1787982/trade-mark-guidelines/14———–13-color-marks

[8] https://guidelines.euipo.europa.eu/1803468/1790394/trade-mark-guidelines/14-1———–13-1-single-colors

[9] Libertal Group BV v. Benelux Markenbureau, Case C-104/01 (hereinafter referred as Libertel)

[10] Libertel paragraph 15.

[11] Color marks in the United States and the European Union: history, landmarks and evolution.

[12] EUTM 002087005

[13] EUTM 000031336

[14] Registration No. 001027747

[15] https://guidelines.euipo.europa.eu/1803468/1789368/trade-mark-guidelines/14-2———–13-2-color-combinations

[16] ECJ, Case C-49/02 Heidelbereger Bauchemie [2002] ECR 1-6129

[17] Guðmundsson, Guðmundur Haukur, Registrability of Motion Marks: Problems and Possibilities (May 20, 2014). Available at SSRN: https://ssrn.com/abstract=2512406 or http://dx.doi.org/10.2139/ssrn.2512406

[18] EUTM 000463174

[19] EUTM 002467876

[20] EUTM 012442158

[21] Trademark Manual of Examining Procedure § 1202.05

[22] 514 U.S. 159, 34 USPQ2d 1161

[23] Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985)

[24] Trademark Manual of Examining Procedure § 1202.05(a)

[25] Trademark Manual of Examining Procedure § 1202.05(b)

[26] 106 USPQ2d 1784, 1791 (TTAB 2013)

[27] Trademark Manual of Examining Procedure § 1202.05(c)

[28] Trademark Manual of Examining Procedure § 1202.05(d)

[29] Trademark Manual of Examining Procedure § 1202.05(d)(i)

[30] Trademark Manual of Examining Procedure § 1202.05(f)

[31] Trademark Manual of Examining Procedure § 807.07

[32] Registration No. 5538052

[33] Registration No. 2359351

[34] Registration No. 5725132

[35] Section 2(1)(zb), The Trade Marks Act, 1999: “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors;

[36] Section 2(1)(m), The Trade Marks Act, 1999: “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof;

[37] Draft Manual of Trade Marks, Chapter III, 3.2.4 at page 82.

[38] Ibid

[39] Section 9(1)(a): (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;

[40] Draft Manual of Trade Marks, Chapter III, 3.2.4 at page 85.

[41] Draft Manual of Trade Marks, Section B, 4.8.1.

[42] Section 10, Trade Marks Act, 1999: Limitation as to color: (1) A trade mark may be limited wholly or in part to any combination of colors and any such limitation shall be taken into consideration by the tribunal having to decide on the distinctive character of the trade mark. (2)So far as a trade mark is registered without limitation of color, it shall be deemed to be registered for all colors.

[43] (CS (COMM) No. 738/2018)

[44] Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd , 2003 (27) PTC 478 Del

[45] Christian Louboutin v Abu Baker, CS (COMM) No.890/2018

[46] Christian Louboutin v Abu Baker, RFA (OS)(COMM) 13/2018 & CM 29064/2018

[47] Christian Louboutin Sas v. Mr. Pawan Kumar & Ors, CS(COMM) 714/2016

[48]  Marico Ltd. vs. Mr. Mukesh Kumar & Ors. 2018(76)PTC168(Del)

[49] Section 30(2)(a), Trade Marks Act, 1999: A registered trade mark is not infringed where (a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services;

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