India: Single Colour Trademarks - The Dilemma

Last Updated: 19 February 2019
Article by Gaurav Tiwari

Growing Scope of Trademark

With growing industrialization, there was a compelling need to compete in the commercial sector. To mark their own products and services as definite, unique and attractive, branding came into picture and so did trademarks. Innovation paved the way to increase the spectrum of trademark and its subject matter.

Trademark is a mark capable of being represented graphically and distinguishes the goods and services of one person from those of others1. There is an endless list as to what can be trademarked. The reason being that the definition is inclusive in nature and anything not expressly excluded can be included provided it meets the requisites given in the Act. This means names, colours, shapes, symbol, device and many more can be included in the list if distinctiveness and graphical representation is present.

Brand names (words or phrases), symbols, signs and logos, all of which may collectively or individually make a mark cannot be without colours and thus colours started gaining significance in terms of trademark.

With passage of time, industrialists and big entrepreneurs started using these colours and its combinations; it helps customers to relate the goods to their source which helps to increase the market of a particular source and also excludes others from deriving any benefit accrued from this unique mark.

This is the reason why trademarks or any other Intellectual Property for that matter are considered right in rem rather than right in personam. For instance, the bitten apple from the famous tech-giant Apple has excluded all others from using this mark as it is not just its brand's recognition but also the goodwill attached to it is the sole property of the company such that anyone who sees the device is able to locate the source of the product (it has more than 40 registrations in classes 9 and 16).

The problem however arose with respect to non- conventional marks, the registration of which became difficult to be given exclusive rights for.

Problem with Single Colour Trademarks

One such non-conventional mark which forms a grey area in the Trademarks law is the single colour trademark as single colour inherently lacks distinctiveness and it becomes very difficult for consumers to identify the source of goods or services just by a single colour.2 It is even harder to determine whether such colour has actually gained distinctiveness among customers wherein they can identify the source of the product just by its colour. Similarly, if the trademark is granted on a single colour it is deemed to attract opposition from other players in the market and objection under Section 9(1)(a) of the Trademarks Act, 19993, as no one will let go the right to use that colour, the obvious reason being that there are a limited number of colours (colour depletion theory) 4.

Allowing one trader to exclusively use this colour would create unjust competitive practice in form of monopolistic power of use in favour of one trader only and what if all single colours that exist are trademarked? It will also open a Pandora's box of multiple litigations. Thus, it is obvious that very high standard of distinctiveness needs to be attached to such mark if the same has to be claimed for trademark protection and that also in exceptional circumstances.

The Law Surrounding the Matter

This issue for the registrability of single colour marks was addressed by World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights(TRIPs)5 which broadened the legal definition of trademark to encompass "any sign...capable of distinguishing the relevant goods or services of one undertaking from those of other undertakings.6 The only benchmark for registrability of a colour being that it is "visually perceptible", "inherently capable of distinguishing the relevant goods or services" or "registrability which may depend upon distinctiveness acquired through use." The definition of the word 'mark' and 'trademark' provides for "combination of colours" or "any combination thereof."7 Moreover, the Act also provides for a device represented by a particular colour or colour combination, the Registrar is given the discretion to impose as a condition of registration, the limitation of the mark to a particular colour or any combination of colours.8 TRIPs agreement which embarks member states of World Trade Organisation has a similar provision as per the Indian law under its protectable subject matter, but it also provides that an applicant may acquire trademark protection if he proves that his mark has acquired distinctiveness through use.

Single colour is nowhere expressly or impliedly excluded from the purview of the definitions. The Indian law has recognised the registration of single colour marks in the Manual of Trademarks, Practice and Procedure, 2015, wherein it shall be protected on strict evidence of acquired distinctiveness and protection granted strictly to the extent of that particular shade of colour.9 However, the standards have been kept high for obvious reasons. Moreover, the Frequently Asked Questions (FAQ's)10 provided by the Controller General of Patents, Designs and Trademarks clearly provides that trademark protection can be granted to single colours.

Single Colour - The Way out

Now the question that arises is how a single colour can become distinctive. An applicant needs to satisfy twofold essentials to establish his single colour mark as distinctive. Firstly, it is very unusual and peculiar in a business such that there is no connection between the product and the colour. Secondly, it is recognised by the consumers as a symbol of origin for particular goods.

This however is a very exhaustive practice and a matter of luck that a certain brand gains heavy popularity in the industry, so much so, that the colour itself becomes the identity of the product. This is easier if the mark becomes a well-known mark.11 According to the definition the registration is not mandatory but recommendatory. Thus, if the applicant acquires the status of a well-known mark through usage, it becomes easy to acquire registration of such mark, even if it is of a single colour.12 But, acquiring the status of wellknown mark is also a big deal. Evidences showing extensive sales and recognition along with past usage for a long period of time are helpful to prove a wellknown mark and subsequently to get a single colour trademark registration.

For instance, Cadbury proved that the colour purple on the wrappers has gained a distinctive character13. Public survey was submitted as a proof to this assertion and the same was granted to it. However, later when Cadbury attempted to widen the scope of its trademark to widen its shade to its other products, it was rejected by the court of appeals14.

Around the world there are several single colours that have been granted trademark protection under their prevailing laws.15 For instance, the US courts have held that a colour could be given trademark protection provided the colour has acquired 'secondary meaning'16. The courts in India have, however, been holding an uncanny stance in this regard. In the year 2007, the Delhi High Court, in Cipla Limited vs M.K. Pharmaceuticals17 did not allow trademark protection to a blister packaging containing a distinctive orangecoloured, oval-shaped tablet. John Deere on the other hand was given protection for its green paint with yellow strips on its vehicles manufactured for agricultural use.18 The blue colour of Parachute oil bottle was also granted protection by the Delhi High Court.19 Other successful cases of single colour trademarks registrations include entities like Victronix AG (#1394234- brown colour label) and Telekom AG (#1462271-magenta colour label) have successfully registered their single colour marks in India.20

But in the year 2018 the same court denied the red shoe sole to Christian Louboutin which is among the top 5 luxury brands for women fashion and is well known among the consumer group belonging to an upper class society and declared that red shoe sole does not fall within the definition of 'mark' as provided in its definition in the Act and is not even a trademark to be afforded protection.21 The court denied it trademark protection even though the same court had earlier granted it the status of a well-known mark.22

The court failed to take in purview that the definition provided in the Act is inclusive and not exclusive in nature while a coordinate bench of Delhi High Court23 had earlier propounded that the definition is inclusive and that is why it includes single colour marks.

Conclusion

It is therefore, clear that for registrability of single colour trademarks there needs to be a 'plus' factor or a secondary meaning to the colour when it is attached to the product. Because single colour lacks the inherent capacity to be distinct, the standard of proof has been kept high. However, there is no exhaustive test as to whether the colour has acquired distinctiveness and it all depends upon how the customers perceive the colour and how the court is able to capture it. But what is clear is that contradictory judgements will cause confusion among applicants and they would be forced to play safe and apply for a unique combination of colours rather than a single colour, while big corporations with big pockets having capacity to fight high-profile cases will take the benefit as well as the risk of protecting single colours in their favour. This is again a hypocrisy of the democracy which tends to create unfair competitive advantages in favour of the rich. The Supreme Court or the Parliament should therefore, lay down strict principles in regards to this aspect to avoid contradictory judgements of the High Courts and also provide protection against anticompetitive practices. If not, the Trade Marks Registry should issue rules or follow a uniform practice in registering single colours as trademarks. This is difficult but not impossible.

Footnotes

1 Section 2 (1)(zb) of Trademarks Act, 1999

2 UK: Colour Marks: The Issue of Trademarking Colours, Jack Kenny

3 Section 9 gives absolute grounds for refusal of registration of Trademark

4 India: Protection and Enforcement of Colour Marks- Shilpi Jain

5 TRIPs is an international treaty which sets down minimum standards of protection and regulation for most forms of intellectual property in all member countries of the WTO.

6 Article 15(1)- Protectable Subject Matter, TRIPs Agreement

7 Section 2(m) defines the word 'mark' and Section 2(zb) defines the word 'trademark' in the Trade marks Act, 1999

8 Section 10 of Trade marks Act, 1999

9 Manual of Trademarks, Practice and Procedure, 2015 pg. 57 and 84

10 Answer to question no. 5 "What are different types of trademarks that may be registered in India?" provided on http://www.ipindia.nic.in/faqtm. htm assessed on 10/01/2019

11 Section 2(zg) of the Trade marks Act, 1999 defines a well known mark as "well-known trade mark", in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the firstmentioned goods or services."

12 Rule 124 of Trademark Rules, 2017 provides for "Determination of wellknown trademark by Registrar"

13 Société des Produits Nestlé S.A. v. Cadbury UK Limited. [2012] EWHC 2637 (Ch) (1 October 2012).

14 CADBURY UK LIMITED v. THE COMPTROLLER GENERAL OF PATENTS DESIGNS AND TRADE MARKS & SOCIÉTÉ DES PRODUITS NESTLÉ S.A.(Case No: A3/2016/3082)

15 Single Colour Trade Marks, Intellectual Property Owners Association

16 Qualitex Co. vs. Jacobson Products Co. Inc. 514 U.S. 159(1995)

17 Cipla Limited vs M.K. Pharmaceuticals MIPR 2007 (3) 170

18 Deere & Company & Anr. Vs. Mr. Malkit Singh & Ors. CS(COMM) 738/2018 Decided on 08.08.2016

19 Marico Ltd. vs. Mr. Mukesh Kumar & Ors. 2018(76)PTC168(Del)

20 IP Expressions, A biannual publication from the Office of Controller General of Patents, Designs and Trademarks, India Vol No.1 Issue 2, January, 2015

21 Christian Louboutin SAS vs. Abubaker and Ors. (25.05.2018 - DELHC)

2018(74)PTC301(Del)

22 Christian Louboutin SAS vs. Pawan Kumar and Ors. (12.12.2017 - DELHC) 2018(73)PTC403(Del)

23 Colgate Palmolive Company v Anchor Health and Beauty Care Pvt Ltd. 2003 VIIIAD Delhi 228

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