Can A Single Colour Mark Acquire Registration In India?
Introduction To Colour Marks In India
Oscar Wilde famously said: mere colour can speak to the soul in a thousand different ways. He was unmistakably aware of the nuances regarding colours in trademark law. Broadly speaking, trademarks are of two types: traditional and non-traditional.[1] Words, numbers and labels are considered traditional marks, whereas position, texture, smell, sound, and colours are considered non-traditional marks. Fundamentally both sets of marks serve the same purpose: to help consumers identify goods & services.[2] However, the quintessential reason for such distinction is due to a slightly elevated standard for the registration of non-traditional marks. In this also falls the case of colour marks.
[Image Source : Shutterstock]
The Trademarks Act, 1999 (‘Act’) refers exclusively to the registrability of ‘combination of colours’.[3] However, the Manual of Trademarks (‘Manual’) and the Hon’ble Delhi HC have noted that a single colour can also acquire registration.[4] In fact, the manual goes a step further by delineating in abstract words the level for such distinctiveness as very unusual and peculiar, but still being connected by consumers and traders alike to a particular proprietor for that class of goods.[5] That being said, there appears to be a lack of consistency in this principle as the Hon’ble Delhi HC in Christian Louboutin SAS v. Anubaker CS (‘Single Bench judgement’) has found a perverse finding and observed that a single colour mark could not be registered.[6] The reasoning is that the legislature has used the words ‘combination of colours’ as opposed to ‘single colour’, making more than one colour a sine qua non for such registration.[7] Although on appeal, a division bench held that the court could not have come to a definite conclusion on this question of law without referring the question to a larger bench.[8] Thereby, leaving a grey area in practice. The question, therefore, remains wide open: ‘Can a single colour mark acquire registration in India?’
This article will answer the question in the affirmative by reading in harmony with the Act, Rules, Manual, and case laws on the subject matter.
What Can Be Registered As A Trademark?
When a mark is graphically represented and can distinguish the goods and services of one proprietor from another, it can be registered as a trademark.[9] In other words, anything referred to in the definition of ‘mark’ will be considered a trademark when it fulfils the criteria laid under Section 2(zb). The finding of the Delhi High Court in Single Judge Bench Judgement was that since Section 2(m) refers to a ‘combination of colours’—only they can be registered.
Notwithstanding the essence of this finding, this is too narrow an interpretation of the true spirit of trademark law. The court failed to take notice that the definition of ‘mark’ under the act is an inclusive definition, meaning thereby, it not only indicates the things already mentioned but also widens the import of the word ‘mark’ to include things which are not mentioned therein. So a mark, due to its inclusive nature, can include anything in the imagination of the proprietor to use as a trademark—a conclusion vehemently confirmed by academic writings.[10] However, this conclusion comes appended with the explicit understanding that a colour mark (especially a single colour) would require special consideration.[11] Moreover, to be distinctive, the evidence should be very strong and persuasive.[12] But this limitation cannot militate against the understanding of having a single colour mark registered as the practice, legislation, and jurisprudence in the regard dictates otherwise.
Thus, due to an inclusive definition of ‘mark’ under Section 2(m), a single colour comes within the purview of trademark registration.
Registration Of A Single Colour: The Challenges & Agreements
Previous Indian judgements on colour marks have yielded that the tests of graphical representation and the ability to distinguish continue to apply to colour mark registrations.[13] Thus, upon fulfilling these tests, no objection is ought on registration for colour marks.
Graphical Representation of Colour Marks
Graphical representation refers to the capability of a mark being represented in paper form or digitised form.[14] The function of graphical representation is to enable the mark in question to be represented visually so that it can be precisely identified[15] and other proprietors understand what has secured registration.[16] Graphical representation of a colour, as opposed to other unconventional marks such as sound or smell (which are not evident), is comparatively easy. Because a colour (or combination thereof) that seeks registration could conveniently be presented on paper and goods. This is evident from the colour marks which have previously secured registration[17] and the cases wherein infringement action was based on the grounds of representation of colours on goods.[18] However, these precedents are limited to a ‘combination of colours’.
Single colour registrations which have secured registration in India are that of VICTORINOX and DEUTSCHE, which are interestingly registered as a word mark[19] and device mark, respectively.[20] A single block of colour in an application form would undoubtedly go beyond the scope of registration unless it contains a cogent description of the colour itself (also known as defining the spatial delimitation or, the extent of the protection sought).[21] This is evident from the Libertel case where the mark comprised an orange rectangle and was accompanied by a description “orange” concerning telecommunication goods and services.[22] However, to remedy this caveat, the court propounded that designating a colour using an internationally recognised identification code (such as Pantone) will constitute a graphical representation, being precise and stable.[23] That, along with a detailed written description of the shade of colour, how it shall be applied to the goods of a proprietor, and what type of consumers it would cater to, is the international consensus and could certainly be entertained in India.[24] Thus, the first requirement makes a colour well within the purview of registration. However, the real obstacle—and perhaps the actual test for registering highly unconventional marks—lies in the test of distinctiveness. This is the case because a combination of colours would always have a higher distinctive appeal as opposed to a single colour. The reason is that a trademark is always seen as a whole, and the average consumer would not nitpick the colour. So, for example, a consumer seeing Red & Yellow in the ‘McDonalds’ mark sees them together rather than in isolation. Thus, the real test in the case of colour registration is that of distinctiveness.[25]
Distinctiveness In Colour Marks: How Distinctive is Really Distinctive?
A colour, by itself, much like a stand-alone letter or numeral, is not inherently capable of indicating a product. So for example, the colour blue (by itself) could not indicate the mark of ‘Dominos’ because the colour blue could also refer to Facebook, Intel, Skype or a multitude of other marks bearing the same colour. However, it is the addition of letters and a device with the colour blue (when seen as a whole) which makes Domino’s mark distinctive and recognizable.[26] Furthermore, if a mark is in use for a long time and users and other proprietors associate the colour of such mark solely with one entity, registration and remedy for infringement are made possible. That, it appears, is the practice followed by Indian courts in cases relating to colour marks: seeing the mark as a whole to have acquired distinctiveness due to continuous use.[27] However, it is worth noting that such a remedy is based on trade-dress and not on a stand-alone colour. Thus, it follows that a colour mark, if judged solely based on the colour itself, would have to achieve a higher standard of distinctiveness, than when colour is seen as part of the trade-dress. But a prominent bar to such registration shall appear when the colour would be used in relation to a product denoting the quality or function of the product[28]—for example, registration of the colour ‘red’ for a brand of apple juice.
Therefore, the anvil of distinctiveness due to the factors of continuous use and the mark bearing an unconventional nature—for single and combination of colours alike—is very high. This is substantiated by the fact that in Deere & Co. v. Mr. Malkit Singh[29], the court relied on a previous judgement of Deere & Co. v. S. Harcharan Singh[30] where the court held their colour (green & yellow) to be a well-known trademark. Although this does not premise the understanding that colours (or combinations thereof) ought to be well-known marks for registration, although the contrary could be beneficial.
The question then comes: How high is the bar? This has to be understood against the background that only limited colours are available in the world (colour depletion theory)[31], and one cannot have a monopoly over a colour unless the consumers and producers both associate the colour with a proprietor. So if a proprietor engages in a heavy advertisement campaign denoting the colour saying, “look for the one with the [blue] wrapper”[32], the colour can acquire distinctiveness over time. For example, the colour violet of Cadbury (See Illustration-A) could have a high chance of being associated with Cadbury for chocolate products under Class 30 of Nice Classification. This is corroborated by the fact that Cadbury did succeed in securing registration for the purple colour on their wrappers.[33] Not to mention, from a broader perspective, registration is not given to a single colour mark; rather, to a specific shade of that colour which the consumer has associated with the product. This is evident from the Colgate case, where the court correctly explained that an illiterate person would identify toothpaste from a colour—or rather, a specific shade of red & white—than word marks.[34]
Thus, the test of distinctiveness based on a colour which consumers and other producers relate to the proprietor could also be fulfilled.
(Illustration-A)
Concluding Remarks
From the analysis conducted insofar, it seems beyond doubt that a single colour can also be registered as a trademark. The bar, no doubt, is set exponentially high, but a high bar—virtually at least—creates no estoppel for registration of a single colour mark. The approach of a colour being exceptionally well-known in public (or not) and thereafter being accepted as a trademark by the registrar[35] or the court[36] is well within the confines of the act. Furthermore, any objection under Section 9(1)(a) as an absolute ground of refusal at the time of registration comes appended with the proviso of acquired distinctiveness[37]—the scope of which is further enlarged by Section 32 where a single colour can also acquire distinctiveness prospectively, as opposed to at the time of registration. All considered, the real interpretation of a mark is ‘anything which can convey information’.[38] A harmonious reading of the act, rules, manual, and case laws convincingly removes the grey area around the law and answers the question with a cautious yes.
Author: Sanchit Sharma, 4th Year, HPNLU, Shimla, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing.
[1] Rachna R. Kurup & Nimita Aksa Pradeep, NON-CONVENTIONAL TRADEMARKS IN INDIA: THE WHAT, THE WHY AND THE HOW, 1 E-JAIRIPA. 131, 132-133 (2020).
[2] Vatsala Sahay, Conventionalising Non-Conventional Trademarks of Sounds and Scents: A Cross-Jurisdictional Study, 6 NALSAR Stud. L. REV. 128, 141 (2011); Sanya Kapoor & Riya Gupta, The Five Senses and Non Traditional Trademarks, 8 Supremo Amicus. 214, 230 (2018).
[3] § 2(zb), The Act read with § 10, The Act.
[4] Manual, 3.2.4. See Generally: Colgate Palmolive v. Anchor Health and Beauty Care Pvt. Ltd. (2003) 27 PTC 478 at para 63. See also: Qualitex v. Jacobson, 514 US 159.
[5] Manual, 3.2.4.
[6] Christian Louboutin SAS v. Anubaker CS (COMM) No.890/2018 at paras 8(i)(ii), 9(i)(ii)(iii) & 11-13.
[7] Ibid.
[8] Christian Louboutin SAS v. Anubaker CS RFA (OS)(COMM) 13/2018 at para 31.
[9] § 2(m) read with § 2(zb), The Act.
[10] Ashwani Kumar Bansal, Law of TRADEMARKS in India with Introduction to Intellectual Property 61 (Thomson Reuters 2014); Aishwarya Vatsa, Subject Matter and Pre-Requisites for Protection of Non-Conventional Trademark, 8 Christ U LJ 61, 75 (2019); Sanya Kapoor & Riya Gupta, The Five Senses and Non Traditional Trademarks, 8 Supremo Amicus. 214, 229 (2018). See also: Kuruvila M. Jacob & Nidhi Kulkarni, Non-Conventional Trademarks: Has India Secured an Equal Footing, 9 Indian J Intell Prop L 47, 49 (2018); Dev Gangjee, Non-Conventional Trade Marks in India, 22.1 NLSI Rev 67, 73 (2010).
[11] The Draft Trade Marks Work Manual at page 109.
[12] The Draft Trade Marks Work Manual, Ibid. See also: Libertel Group BV and Benelux-Merkenbureau [2003] E.T.M.R. 63 at paragraph 21
[13] Deere & Company v. Mr. Malkit Singh 2018 SCC OnLine Del 8527 at para 20.
[14] Rule 2(2)(k), The Trademark Rules, 2017 (‘Rules’). See also: David Keeling, David Llewelyn, James Mellor, Kerly’s Law of Trademarks and Tradenames 23 (Sweet & Maxwell 2017); Bansal, Supra note 11, at 61; Aishwarya, Supra note 11, at 75; Bently, Sherman, Gangjee, & Johnson, Intellectual Property Law 934 (OUP, 2021).
[15] Sieckmann (C-273/00) EU:C:2002:748 [2003] Ch 487
[16] Vatsala, Supra note 2, at page 129.
[17] VICTORINOX AG (Brown Shape Colour) Trademark Application No.: 1394234; DEUTSCHE TELEKOM AG (Magenta Colour Label) Trademark Application No.:1462270; TATA SIA AIRLINES LIMITED (Violet Golden Colour) Trademark Application No.: 4648850; CHRISTIAN LOUBOUTINS (DEVICE) Trademark Application No.: 1922048.
[18] Deere & Company v. Mr. Malkit Singh 2018 SCC OnLine Del 8527; Marico Ltd. vs. Mr. Mukesh Kumar & Ors. 2018(76)PTC168(Del); Colgate Palmolive v. Anchor Health and Beauty Care Pvt. Ltd. (2003) 27 PTC 478.
[19] Trademark Application No.: 1394234
[20] Trademark Application No.:1462270. This is also the case with Christian Louboutins colour mark. Trademark Application No.: 1922048.
[21] David Keeling, David Llewelyn, James Mellor, Kerly’s Law of Trademarks and Tradenames 33 (Sweet & Maxwell 2017).
[22] Libertel Group BV and Benelux-Merkenbureau[2003] E.T.M.R. 63 at paragraph 15.
[23] Ibid at paras 30-37.
[24] WIPO ‘Representation and Description of Non-Traditional Marks – Possible Areas of Convergence’ (SCT 19/2) Apr. 28, 2008, at 23- 28 as cited in Dev Gangjee, Non-Conventional Trade Marks in India, 22.1 NLSI Rev 67, 76 (2010).
[25] Colgate Palmolive v. Anchor Health and Beauty Care Pvt. Ltd. (2003) 27 PTC 478 at para 61; Deere & Company v. Mr. Malkit Singh 2018 SCC OnLine Del 8527 at para 24.
[26] See Generally Kellogg Company v. Pravin Kumar Bhadabhai, 1996 PTC (16) at para 9.
[27] Colgate Palmolive v. Anchor Health and Beauty Care Pvt. Ltd. (2003) 27 PTC 478 at paras 53-56 & 58-59
[28] Christian Louboutin SAS v. Anubaker CS (COMM) No.890/2018 at para 19(iii)(iv)
[29] (2018) 74 PTC 561
[30] CS (OS) 3764/2014
[31]Gaurav Tiwari, Single Colour Trademarks – The Dilemma, Mondaq (January. 13, 2023, 4:56 PM), https://www.mondaq.com/india/trademark/782690/single-colour-trademarks—the-dilemma#
[32] The Draft Trade Marks Work Manual at page 107.
[33] Société des Produits Nestlé S.A. v. Cadbury UK Limited. [2012] EWHC 2637 (Ch) (1 October 2012).
[34] Colgate Palmolive v. Anchor Health and Beauty Care Pvt. Ltd. (2003) 27 PTC 478 at para 53
[35] § 2(zb) read with § 11(6)(7)(8)(9) & (10) read with Rule 124 of the Act.
[36] § 11(8), the Act.
[37] Proviso, § 9(1), the Act.
[38] Philips Electronics BV v. Remington Consumer Products [1998] RPC 283.; Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995); Dev Gangjee, Non-Conventional Trade Marks in India, 22.1 NLSI Rev 67, 68 (2010)
