India: Protection and Enforcement of Colour Marks

Last Updated: 2 May 2017
Article by Shilpi Jain

Colours are often used by businesses to distinguish their goods and services, whether by use on products itself, on the packaging or in advertising material. Therefore, companies sometimes attempt to register colour per se as a trademark or a combination of colours or complex marks with coloured word and figurative elements or trade dress. Each one of these possibilities gives rise to different legal considerations. This article aims to give a general overview of the principles and problems involved in protection and enforcement of colour trademarks in the light of current judicial trend.

Single colours are well-established categories of non-conventional trademarks. There are many reasons why a cautious approach to the registration of single colour marks is preferred. Firstly, according to the colour depletion theory, there are only a limited number of colours available. Therefore, allowing monopolization of a single colour may create an unjustified competitive advantage for a single trader. Moreover, it is also internationally accepted that functional colours i.e. colours which convey a direct reference to the character and quality of the goods or services, should not be protected as trademarks. For example, colour Red for fire-fighting devices or colour Green for ecological goods/services or colour Grey for machines would be very non-distinctive. Secondly, in cases where the colour identified by internationally recognized colour codes such as Pantone, is highly nuanced, it will not be perceived with the necessary degree of precision by the relevant public and will lead to confusion. For example, registration of a particular shade of Purple could lead to protection over all the shades of Purple which lie close on the spectrum. Thirdly, it has been observed by the courts world-wide that consumers are generally not in the habit of making assumptions about origin of goods or services solely on the basis of colour because colours possess little inherent capacity for communicating specific information. For example, even a world-renowned company may fail to get protection for a colour if the consumers identify the company with the brand name and not with that particular colour.

Due to the above reasons, colours per se may be registered on the basis of inherent distinctiveness only in exceptional circumstances. For example, registration of colour Black for milk may be considered as inherently distinctive. Protection could also be given where the application is to register a colour mark for a very small range of goods or services belonging to a very specific market or where the number of competitors is negligible. For example, protection sought for Red colour for only soles of high-heeled shoes. However, the current trend shows that a colour mark does stand a chance of maturing into registration where strong evidence of 'acquired distinctiveness' has been put forward. In such cases a combination of different forms of evidence proves to be the most effective tool. Carefully worded opinion polls and surveys showing that the interviewees spontaneously associated the colour with the applicant's brand may also convince the registration authority that the colour mark ought to be registered. It is also pertinent to note that the evidence must be such that it proves association of colour with the specific goods and services as the same colour may be associated with two or more traders. Loose associations are not sufficient to satisfy distinctiveness, no matter how long the usage has been for.

Another internationally accepted principle is that all colour marks must satisfy the requirements of graphic representation and be clear, precise, self-contained, easily accessible, intelligible, durable and objective. In order to fulfill these criteria, the applications for colour marks must contain a description, a sample and a designation of the colour using an internationally recognized identification code. In other words, single colours trademarks should be registered only when the application is either strictly spatially delimited or is for a very limited number of formulations or representations.

Now, even when the applicant manages to get a colour mark onto the register, this will not be the end of story. The next immediate difficulty will be to know how much protection it will receive. In such situations, the burden of litigation shifts from an absolute grounds context to a relative grounds one. Often the danger in upholding the protection offered by a colour mark in an inter-partes context is that the decision makers could risk making a gross distortion of competition. The proprietor of a colour mark could end up getting an overly wide scope of protection and an unjustified monopoly.

Easier approach is taken for registration of complex trademarks involving word or figurative element along with the colour. However, for the purpose of enforcement it is for the applicant to prove that colour is the essential and prominent part of the trademark because generally it is presumed that word or figurative element is the dominant part. A perfect example of this would be the recent Indian case of Britania Industries Ltd. v. ITC Ltd. where Division Bench of the Delhi High Court allowing the appeal held that since ITC failed to establish that the combination of Yellow and Blue in its trade dress has become a 'badge of its goodwill', Britania could not be restrained from using the same colour combination. It was observed that if the evidence produced shows that that the claimant relies wholly or mainly on his trade name or business name, protection cannot be granted over a particular get-up or colour combination.

It can be concluded that unless applications for colour marks are made for a narrow market and very specific goods and services, they will obtain registration only where the acquisition of distinctive character through extensive use and promotion is shown. This means that monopolies over colours are in the hands of a very few because mostly, it will only be global operators which will be able to satisfy the requirements of wide use and extensive promotion. Further, it is upon the registration authorities and the courts to consider the economic and social background of the country while granting registration or protection to colour marks and even if registration is granted, it should be construed narrowly. To avoid conflicts relating to colour marks, search mechanics could be worked out with the relevant search companies and trademark professionals to provide a kind of search tool to enable the proposed applicant to obtain an accurate picture of those colours which are in conflict with his/her mark.

While global position may be more or less settled, not many inter partes conflicts have yet been tested under the Indian Law with respect to colour marks. Although the registration of colour marks is not prevented under the Trade Marks Act, 1999 but protection and enforcement of the same has always been a subject of heated debate even in India. The Draft Manual also adopts a very cautious stance towards assessing distinctiveness for colour marks. Thus, further judicial clarification on several unresolved issues is still required at the national level.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.