Trademark for Colours.

INTRODUCTION

Trademark refers to the cumulation of distinctive sign/symbol, design, or combination which is exclusively associated with the products or services helping the targeted customers identify the same easily. With the fast-growing media and entertainment sector, the era of digital advertising for product branding and selling has also stepped up. Now brands need to have a concept and create an aesthetic philosophical nexus to bond with their users, this has propelled the unfolding of unconventional trademarks which gives the brand an edge over others. The single color or a combination of the color palette used for packaging can secure trademark protection only if the said colour or combination is competent enough to be recognized by the public associated with the specific brand only. For example the purple shade of the wrapper of Cadbury, or the Red and Yellow combination for McDonald’s, or a brand so famous for using the colour that the shade is named after it like the Tiffany Blue from the package covering from Tiffany & Co.

[Image Source: iStock]

Trademark refers to the cumulation of distinctive sign/symbol, design, or combination which is exclusively associated with the products or services helping the targeted customers identify the same easily. With the fast-growing media and entertainment sector, the era of digital advertisement for the products branding and selling have also stepped up. Now brands need to have a concept and create an aesthetic philosophical nexus to bond with their users, this has propelled the unfolding of unconventional trademarks which gives the brand an edge over others. The single colour or a combination of colour palette used for packaging can secure trademark protection only if the said colour or combination is competent enough to be recognized by the public associated with the specific brand only. For example, the purple shade of the wrapper of Cadbury, or the red and yellow combination for McDonalds’, or a brand so famous for using the colour that the shade is named after it like the Tiffany Blue from the package covering from Tiffany & Co.

Colours tend to get visually embedded in your minds, and have even immense impact compared to any tagline or statements. In India, the Trademark Act of 1999, protects the interest of the owner, prevents illegal or unauthorised use of the mark, and keeps the competition in check. But then why are colour marks controversial? As per Section 2(1)(zb) of the Trademark Act 1999 refers to 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 colours.  Colour marks in order to obtain protection need to satisfy two basic criteria of 1) Distinctiveness, and 2) Representation.

• Distinctiveness – under the Trademark Act, the term ‘mark’ includes ‘combination of colours’ making it intrinsically obscure. However, if the colours are essential to the products/services, or affects its cost or quality. Therefore, since 1995 sole colour, or colour combinations can be trademarked,

○   If they serve a source of recognition of the brand, or

○   Do not serve merely as an ornamental or adorning purpose.

• Representation – When the general public and its user associate the colour combination with the brand which in return intensifies the market value of the brand and prohibits others from utilising the goodwill of the brand in question. Colour Marks require proof of ‘Secondary Meaning’, in other words, a colour can be trademarked in relation to a specific commodity or service if, through time, it has been used to represent that good or service and the public has come to associate that hue with a specific source.

In the case of Cadbury v Nestle, Cadbury applied for Trademark in the UK under the class 30 (food stuff) for milk chocolate and drinking chocolate in the year 2004. The hue purple has always been associated with the brand of ‘Cadbury’ since 1914. So, each of the said application was for the colour ‘Purple’ Pantone shade 2685C attached with descriptive reference –

• Mark 1 stated that the colour was “applied to the complete visible surface of the goods package.”
• The colour “added to the packaging of the items” was how mark 2 defined it.
• Mark 3’s description made no mention of the products’ packaging.

This registration application for trademark of the hue, was sternly opposed by Cadbury’s staunch foe, Nestle. Nestle argued on the basis that a particular colour cannot be granted protection under section 3(1) (a) of the Trade Marks Act, 1994 (UK). Nestle contended that

• The said mark could possibly take countless forms of advents, so it’s not a ‘sign’ as per the Trade Marks Act, 1994, and
• The mark should be ruled out from the registration because it does not contain a distinctive character.

Nestle’s contention on the grounds of how can one company be owner or have exclusive rights over a colour that exists in the public domain and are not created by the intellectuals of the said owner.

But Cadbury retaliates all of Nestle’s contention by proving beyond doubt that the said tone of Purple has been used by Cadbury for more than a century. Finally, in 2011, Cadbury was permitted the protection and exclusive right over the Purple shade of Pantone 2685C.

Judge Colin Birss stated that “since the evidence shows that the public associates the colour purple itself with Cadbury’s sweet chocolate, Cadbury is entitled to be registered trademark for that hue on relevant goods.” Colours can be granted protection under Trademark if they are  related  to  the  product  and  the  public  easily associates them without being confused between different brands of similar kind. In India, under section 2 (1)(m) of the Trademark Act 1999 “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof”

Courts in India have generally practised registration of combination of colours, and not of a single patch of colour. This practice was recapitulated in the case of Christian Louboutin for its famous unmatchable red sole shoes. Christian Louboutin has trademark protection under multiple classes 3,14,18 and 25, and enjoys worldwide reputation for its goodwill.

The suit was instituted by the plaintiff (Christian Louboutin) against the defendants for using the exact same shade of red on the soles of their ladies footwear, directly infringing and taking advantage of the goodwill and reputation created by the plaintiff.

In two out of three cases of Louboutin v. Pawan Kumar (2017), and Louboutin v. Ashish Bansal (2018) the court held that ‘Red Sole’ itself is a well-known trademark, and Louboutin has been making use of the red sole mark since 1992 which is appreciated and recognized across  the  globe  for  its popularity. The courts accredited Louboutin’s registered mark in India. The defendants were held liable for manufacturing footwear using ‘Red Sole’ without the authorization from the plaintiff, and were asked to pay for the damages.

But in the third case Louboutin v Abubaker (2018), the court scrutinised the definition of the term ‘mark’ which specifically only uses the expression of ‘combination of colours’, whereas Louboutin uses only one colour, Red. The Plaintiff claimed that a single hue is capable of acquiring distinctiveness through the usages and purpose, once distinctiveness is established even a single hue can become a valid ground for granting protection under Trademark Act, 1999.

The court, however, disqualified the claim on the ground of sine qua non, single colour would not fall under the category of combination, so it cannot be claimed as a trademark. On the ground of Section 30(2)(a), the court also held that if the trademark of the product/service is also a characteristic of the goods then the court cannot absolutely restrict any other person from using the mark, even if the mark has prior registration. In such circumstances, there would be no infringement. Since the defendants were selling their goods under the word mark of ‘Veronica’ which is purely different from the plaintiff’s work mark ‘Christian Louboutin’, the suit was dismissed on the ground of absence of legal cause of action.

CONCLUSION:

The trademark registration of colour marks in India are still debatable, courts have established since trademark is all about strictly monopolising resources by sole owner who enjoys the exclusive commercial rights so, before granting trademark protection, the Registrar has to make sure the colours pass the distinctiveness test. Colours are inherently indistinctive, the onus to prove has sufficient distinctiveness lies with the Applicant. Registration for trademarking a colour or the combination of colours in the present scenario requires some ‘plus factor’ to have that edge over the users and to be in sync with market conditions, secondary meaning to the colour when it’s associated with the product. Although colour trademarks are not specifically disallowed, the Trademark Examination Draft Manual highlighted that they should be subject to subjective examination and that; “The  key issue will usually be whether the proprietor has used the mark distinctively to educate the public that the colour itself is a trademark.”

Author: Soumyashree Mishra, BA LLB (Hons) 3rd Year, a student of KIIT School of Law, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.