TITLE: TRADEMARK AND COLORS
The blog presents a briefintroduction of the Indian Trade Marks Act, 1999 while elaborating uponTrademarks and its relation to colours, its authenticity and the legal processrelated to the same.
Human eye can distinguish betweenone million different colors and too no one’s surprise, companies exploit thatability to the fullest. Research has shown that association with colours have apotential of increasing brand recognition as much as by 80%.Companies are in the lieu of finding their uniqueness for their brand’s identity,especially from the consumers’ perspective and the usage of particularcombination of colours or distinctive shades of colours for their brand’s logo,product packaging, the product itself, etc. is an attempt at imprinting theuniqueness of their brand’s identity into consumers’ minds.
Let us take some real-life exampleswhich would help us to understand how upon repeated exposure we connectparticular objects of general use with particular colours, what comes to yourmind when you think about green and fuel? Petrol? What comes to your mind whensomeone says yellow and car? Taxi? These objects are of general use without anyunderlying distinctive brand connotations but they still have their distinctidentity because of their repeated exposure along with the colours which havenow come to be associated with them. Now let us take some examples of how wehave associated particular brands and/or the products offered by them withparticular colours and/or colour combinations, what comes to your mind whensomeone says purple and chocolate? Cadbury? What comes to your mind whensomeone says soda and red? Coca Cola? What comes to your mind when someone saysred and white toothpaste? Colgate?
The above-mentioned companies have repeatedlyexposed their products in a trade dress of such a nature that a normal consumerwould instantly connect the colour or colour combination with the productoffered by the brand. As companies have successfully secured such a uniqueidentity, they would want exclusive rights over such identity and that’s exactlywhat trademark protection offers.
Britannica defines trademarks asfollows:
“Trademark is any visible sign or device used bya business enterprise toidentify its goods and distinguish them from those made or carried by others.Trademarks may be words or groups of words, letters, numerals, devices, names,the shape or other presentation of products or their packages, colourcombinations with signs, combinations of colours, and combinations of any ofthe enumerated signs.”
Definition for a trademark is givenunder Section 2 (1) (zb) of the “The Trade Marks Act 1999”, it reads asfollows:
“trade mark”means a mark capable of being represented graphically and which is capable ofdistinguishing the goods or services of one person from those of others and mayinclude shape of goods, their packaging and combination of colours.
Moreover, thedefinition of a mark is provided under Section 2 (1) (m) of the “The TradeMarks Act 1999”, it reads as follows:
“mark” includesa device, brand, heading, label, ticket, name, signature, word, letter,numeral, shape of goods, packaging or combination of colours or any combinationthereof;
Now as we haveunderstood the meaning of a trademark in accordance to the statute, let usunderstand the objective of trademark protection. The objective of trademarkprotection is two folded, one from the side of the company offering aparticular product under a trade dress as it offers companies a protection fromunfair competition as it would restrict other companies from implementing thesame trade dress for similar products and the other from the side of theconsumer as it would protect the consumers from being misled into buyinganother company’s product rather than the one which the consumer intended tobuy.
Thereare basically two categories of trademarks through which companies establishtheir unique identity, (1) Traditional and (2) Unconventional. Traditionaltrademarks are general logos, devices, symbols, etc. Unconventional trademarksare in the form of smells, shapes, sounds, etc. and colours and combinations ofcolours come under unconventional trademarks.
3. Colour Trademark
Section 10 ofthe “The Trade Marks Act” talks about the limitation as to colour and it statesthat:
“A trade markmay be limited wholly or in part to any combination of colours and any suchlimitation shall be taken into consideration by the tribunal having to decideon the distinctive character of the trade mark. (2) So far as a trade mark isregistered without limitation of colour, it shall be deemed to be registeredfor all colours.”
Under thetrademark law, a colour is indistinct but a combination of colours withsatisfactory acquired meaning can gain distinctiveness and is capable of gettingtrademark protection. As we have observed above, for such a protection it isnecessary that the consumers recognize your product with a particularcombination of colour and an evidence of that needs to be submitted by anapplicant while filing for a colour trademark.
In case of acolour trademark, the colour is the brand and the use of such colour in a givenmarket sector is protected by trademark. It is also important to note that asthere are limited colours, it is not possible to let companies own a colour in itselfacross all product categories and therefore, it is of paramount importance thatthey only be granted colour trademark for the cases in which their consumerscould get confused with other similar products. For example: Tiffany & Co. onlyowns their famous tone of blue, “robin’s egg blue” in the situations where thecolour could be confused with their products. So someone could still be makinga robin’s egg blue coloured soft drink and not be infringing Tiffany’s colourtrademark as soft drink and boxes and bags (of which Tiffany’s owns colourtrademark) are completely different categories of product which can’t possibly beconfused between.
It is alsoimportant to note that a colour which portrays functionality for a particularproduct category cannot be trademarked. For example: green for lawn mowers, redfor first aid kits, etc.
Now I would bemoving on towards some of the cases surrounding colour and colour combinationtrademarks decided by the Indian Courts.
One of suchcases is of Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt.Ltd. Colgatehad been selling its toothpowder with the trade dress of colour combinationconsisting of one third red and two third white. Anchor also started sellingits toothpowder in the same trade dress. Moreover, the shape of the can offeredby Anchor was also similar to that of Colgate’s. Colgate alleged that thecompany has rights over the particular trade dress (the combination of thecolours and the shape of the can) for toothpowder and therefore, they soughtinterim injunction. On the other side, Anchor contended that the said colourcombination was neither distinctive nor unique. Moreover, they also contendedthat the shape of the container cannot be ‘monopolised’ by Colgate unless itwas registered under the Designs Act, 2000. The Delhi HC propounded that thelaw regarding trade dress in unambiguous which says that the trader’s goods arerecognised by their general appearance, or “get-up”. Therefore, the Court heldthat resemblance of get-up is an ingredient of passing off (the Law of Passingoff prevents one person from misrepresenting his goods and services as that ofanother). The Court compared the trade dresses and opined that the shapes ofthe cans and the combination of colours used on both of them looked similarfrom a layman’s perspective. Moreover, Court also added that as trade dressesbuild consumers’ trust on a particular product, another company using a similartrade dress for that product might dissuade consumers into buying the productfrom a different brand then they intended to. The learned judge also added thattoothpowder is generally utilized by illiterate, unwary, and gullible consumersand there are higher chances of such consumers being dissuaded from a similartrade dress.
In the case ofCadbury UK Limited v. The Comptroller General of Patents Designs and Trademarks& Société Des Produits Nestle S.A,Cadbury was successfully able to gain protection for its famous purple coloured(pantone 2865C) chocolate wrappers used for packaging its milk chocolate asthey were able to prove that it had gained a distinctive characteristics.However, it is pertinent to note that Cadbury had to submit a public survey toprove such distinctiveness.
Itis also pertinent to note that in India, the Courts have been hesitant in handingover trademarks for a single colour even though they would be limited to aparticular product. In the case of Christian Louboutin v Abu Baker,the Delhi HC refused the trademark for red colour on the sole of heeled shoeson the contention that the mark was consisting of a single colour red which isnot in accordance to the definition provided under Section 2 (1) (m) of the “TheTrade Marks Act 1999” which talks about combination of colours and not asingular colour. The Court stated that the explicit usage of the wordcombination of colours portrays the intention of the legislature for not givingtrademark protections for singular colours. Moreover, the Court also denied theremedy under the law of passing off which falls under the common law eventhough the Section 27 (2) of the “The Trade Marks Act 1999” states that nothingin the statute shall affect the rights of a person filing for passing off.
Colourtrademarks are one of the most important forms trademarks and as companiescompete to establish their own unique space in the market arena, this field isgoing to further evolve. We have observed that the Indian statute relating totrademarks talks about combination of colours and nowhere it talks abouttrademark protection for singular colours. The Courts have stringently followedthat terminology even for remedies under the common law and have denied colourtrademarks for singular colours even if they are not functional colours.However, the situation is different in other jurisdictions, we have noticed inthe cases of Tiffany & Co. and Cadbury that they have been grantedtrademark protection for their singular colours at least until some extent.Indian Courts should move on from the current stringent interpretationregarding singular coloured trademark and regard trademarks for what they are,i.e. unique identification mechanism for a particular product offered by aparticular under a trade dress and if a product offered by a particular companyis identified by a singular coloured and if such identification is distinctive,then that entity shouldn’t be put at a disadvantage.
Intern, Sejpal Associates Advocates
B.A., L.L.B (Hons.) Semester- II
National Law University, Gujarat
Christian Louboutin vAbu Baker CS (COMM) No.890/2018