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.