By – Moka Karthik

Introduction

Colour trademarks are gaining popularity in the dynamic trademark world, where logos and symbols are key to brand awareness. Colour as a branding aspect is rising in India, a diverse industrial hub. Colour logo differs a company from others. A unified logo colour is applied throughout media. This visual element, as can be a logo, helps the firm establish brand recognition.

Colour depictions are unique visual expressions that enhance brand recognition and leave a permanent mark. A trademark protects a company from misuse by anyone. An exclusive colour rights recognition helps protect company identity and prevent buyer confusion by preventing rivals from using the same colour.

Colours and their combinations are crucial for recognising and identifying goods made by the specific manufacturer. The choice of colour for trademark recognition is always a contentious issue. Colours can be trademarked. Several countries accept a single colour as a trademark. Unfortunately, there is no universal agreement in statutory definitions or case law concerning whether a single or combination of shades may constitute a trademark.

Because colours are inherently difficult to distinguish, protecting colour rights can be challenging. Brand registration and protection are governed by the TRIPS agreement, which is a part of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights. A trademark must perform its basic obligations under TRIPS, but a brand does not have to be visible, visually evident or artistically representable. The Trade Marks Act of 1999 protects trademark rights in India, however colour marks must prove uniqueness and artistic representation to be registered. The app must prove uniqueness through consistent usage or greater significance.

Understanding Colour Trademarks

The primary objectives of a trademark are to safeguard the manufacturer’s goodwill and reputation, as well as to prevent the public from being misled or deceived about the origin of their goods.[1]

A colour trademark is an unconventional trademark that acts as a trade mark by using at least one colour to uniquely identify the commercial origin of goods or services. A colour trademark is a symbol or logo that a company uses to identify its brand. It is also known as the company’s mark. It primarily links the brand with a particular colour. The utilisation of colour within a particular industry is protected by these trademarks. In recent years, there has been an increase in the use of colours as trademarks in the marketplace.

Colours can make us feel things, send messages, and leave long lasting memories. In branding, colours are often linked to the beliefs and identity of a business.

Colours affect product perception. Colours can be metaphorically or figuratively linked to evoke certain emotions. While green represents healthy or organic foods, blue represents cold, frozen food. Some colours or aesthetics work well together. Since green and yellow are related, they work well together. Colours that stand out may have visual effects. Some colours are immediately noticeable. Some enhance text readability. Colours differentiate certain things from other. Industrial machinery and consumer items are examples. Fuji packages its film in a green box, while Kodak uses black and yellow. Packaging styles can also be recognized. Blue, orange, and yellow are prominent laundry detergent package colours. Even with the same hues, the package and label may change. Consumers may confuse similar colours, label layouts, and packaging designs. When packages are too similar, consumers may be confused and buy the wrong product.

Colours are extremely helpful in marketing and help companies form bonds with customers that people will remember.

Colours and colour combinations are crucial for distinguishing products in the market, especially for consumers who struggle with traditional marks.

Legal Framework for Colour Trademarks US

In the US, trademark registration and protection are governed by the Lanham Act. Since the Act says that “protection can be granted to any words, symbols, name, or any combination if they are used to identify and distinguish goods or services of one undertaking from those of other undertaking,” graphic representation is not necessary in the nation.”[2]

According to the law, a trademark has to fulfil non-functionality, distinctiveness, or acquired distinctiveness requirements to help consumers identify a product from others.

EU

EU trademark law is called Community Trade Marks (CTM). The CTM does not define trademarks solely. According to the regulations, a trademark comprises a ‘word mark’ and other numbers letters, and signs for which the applicant does not claim any distinctive graphic representation or colour.[3]

India

“Section 2(1)(zb) defines a trade mark as a graphically expressed mark that distinguishes goods or services from others, including shape, packaging, and colour combinations.”[4]

“According to Section 10 -A trade mark can be limited to a colour combination, which will be considered by the Registrar or High Court while determining the trademark’s distinctiveness.”[5]

As per Section 26(2) of the TM Rules, 2017[6], trademark applications, including those for colour combinations, must provide a copy of the mark. The Act does not particularly address single colour trademarks. Section 9(1)(a) of the Act[7] stipulates that trademarks without distinctiveness are ineligible for registration.

Legal Principles

Distinctiveness:

• When it is recognised by the individuals to whom it is addressed as designating goods from a specific industry source, or is capable of being so recognised, it is distinctive for the goods to which it is to be applied. The uniqueness of a sign is not a fixed and absolute factor. It is entirely circumstantial. It may be acquired, increased, or even lost, depending on the actions of the sign user or third parties.

Non-Functionality

• The objectives of the patent law, which grant inventors a limited monopoly over their creations and deny protection to innovations that are either apparent or insufficiently creative, may be undermined by the inclusion of functional elements in trademark law. An inventor could prevent competitors from utilising functional features on their products indefinitely if they could be trade-marked, even after the expiration of his patent.[8]

Balancing Act

A product’s mark communicates a message to the buyer. In the majority of trademark cases, the primary assessment is whether the mark conveys a valuable and unique message to the purchaser, or if it fails to provide any additional information and may even be misleading. The mark does not provide any additional information regarding the quality or origin of the products if it is not distinctive. Furthermore, the purchaser is not informed by the product’s solely functional features; they merely enable the product to perform its intended functions.

Challenges in Registering Colour Trademarks

Registration of Trademarks for unconventional is bit complicated when compared with conventional trademark. The registrability of non-traditional trademarks is not explicitly addressed in India’s legislation. Nevertheless, the trademark registration manuals of the relevant trademark registries offer the requisite guidance on the registrability criteria and examination procedure for non-traditional trademarks in such circumstances.

Non-traditional trademarks must satisfy the fundamental prerequisites of distinctiveness, visual perception, or graphical representation, as stipulated in TRIPS Convention 15. It must consist of a unique sign that can function as a source identifier. It must not confuse or deceive the people.[9]

Signs must be distinctive to be considered trademarks, and registration should be denied if not. Since these grounds for registration refusal, the applicant usually need not prove distinctiveness. The trademark should be registered if the registrar cannot prove lack of distinctiveness.

The crucial issue in practice is whether a trademark signifies or describes the products claimed for. The answer to this topic depends on local laws and jurisprudence, as well as the unique case circumstances. The registrar must determine if the term is descriptive or suggestive, and how much the applicant has used it previously. Typically, a descriptive term is distinctive for commodities if it includes a secondary meaning, suggesting a certain trading source.

When deciding whether to accept a mark for registration, it is sometimes enough to look at how long it has been used in commerce to determine if the phrase is descriptive or suggestive.

It will be more challenging to prove secondary meaning and a higher percentage of consumer awareness will be required for more descriptive terms.

Non-Functionality Requirement

Two forms of functionality restrict trademark protection: utilitarian and aesthetic.

1. Utility functionality includes design efficiency, usability, manufacturing, pricing, and other characteristics of a product’s material utility or quality.[10]

In “Inwood Labs v Ives Labs.”[11] The court did not prohibit “generic” medication makers from replicating the colours of “brand-name” producers. The District Court’s ruling that colour helps prescription pharmaceuticals be identified in an emergency, due to patients mixing medications, and preventing chemists from confusing dosages.

• Aesthetic functionality is significantly more ambiguous. It pertains to design features that contribute to the product’s commercial success, despite the fact that they do not reduce the cost of manufacturing or make it simpler to use.[12]

In “Keene Corp v Paraflex Industries”[13], Inc. The court denied trademark protection for a light fixture design due to its purpose of architectural conformity with the building it is mounted on. Therefore, its design arrangement is directly tied to its function, not only looks.

Judicial Precedents

1. Colgate Palmolive Company and Anr vs Anchor Health and Beauty Care Pvt Ltd.[14] Because the defendant had engaged in “passing off” plaintiff’s goods as its own, the plaintiff requested an ad interim injunction to prevent the defendant from using trade dress and the colour combination of one third red and two thirds white, respectively, on its Tooth Powder container. The court granted an interim injunction and affirmed the plaintiff’s claim.

• Cadbury Uk Limited V. The Comptroller General of Patents Designs and Trademarks & Société Des Produits Nestlé S.A.[15] Nestle fiercely opposed Cadbury’s attempt to trademark a specific shade of purple for their chocolate wrappers, one of the most famous colour trademark conflicts. Cadbury claimed the colour had a secondary significance and was associated with their brand, but Nestle said colours couldn’t be monopolized. Cadbury won the purple shade trademark after a lengthy legal battle, but the case showed the difficulties of colour trademarking.

• Deere & Co. & Anrv. Mr. Malkit Singh & Ors.[16] Because of its renown, distinctiveness, and ease of identification, the Delhi High Court granted protection to the Plaintiff’s green and yellow colour combination on agricultural tractors in 2018.The colour scheme has been utilised for a century, leading the public to associate the yellow wheels and green body with Deere tractors.

• Christian Loubsoutin vs Abu Baker.[17] Due to the fact that the mark only consisted of the colour red, which is invalid according to Section 2(1)’s definition of a mark, the Delhi High Court dismissed the trademark application for the red colour on the sole of heels (m). “Combining colours” is a prerequisite for being a “mark,” which means that a single colour, as opposed to a combination of colours, cannot qualify as a “trademark.” The Court observed that the legislative intent to prohibit single-color trademarks is expressly expressed by the expression “combining of colours” in Section 2(1)(m).

• Cipla Ltd. v. MKI Pharmaceuticals[18] The plaintiff in this case requested an interim injunction to stop the defendant from using an identical orange colour in their products. The court determined that replicating a product’s colour does not amount to passing off because there cannot be any monopoly on colours.

• Britannia Industries Ltd v. ITC Ltd.[19] The Delhi High Court determined that ITC failed to establish that the yellow and blue colour combination of its Sunfeast Farm Lite Digestive All Good Biscuit had evolved into a “badge of its goodwill.” Consequently, ITC was not granted an interim injunction against Britannia’s Nutri Choice Digestive Zero Biscuit.

Strategies for overcoming Trademark Conflicts

1. Creating a robust enforcement plan is essential to protecting your IP. This technique generally combines civil and criminal actions for maximum effect.

• Civil or criminal remedies depend on the nature and severity of the infringement. Individual situations of infringement and/or passing off can be resolved and compensated through civil procedures. They let trademark owners litigate their rights in a more controlled and predictable manner.

• For widespread or systematic infringement schemes like counterfeit items that threaten brand integrity and customer safety, criminal actions are better. Their participation with law enforcement may result in fines and jail for infringers.
  • Each trademark enforcement strategy should take into account the severity of the infringement, available proof, and intended goals. Trademark owners can defend their trademarks and market reputation by taking a proactive and multifaceted strategy to enforcement.

• Parties can negotiate a win-win solution. License agreements, co-existence agreements, or lump sum or payments for trademark use are all possible settlements.

• Some trademark registrations require a public notice period for third parties to challenge registration if they believe it breaches their rights. If filed in time and upheld, an opposition can stop trademark registration.
  • If negotiations fail, a trademark owner may sue for injunctions, damages, or domain name transfers.

• Mediation or arbitration can resolve trademark disputes faster, less formal, and cheaper than court litigation.
  • Many jurisdictions IP or Trademark Offices help resolve disputes and may have internal processes for contesting or cancelling trademark registrations. Definition of Trademark Conflict Trademark conflict occurs when two parties disagree on trademark use, registration, or infringement

Trademark conflicts can occur locally, regionally, nationally, and internationally. Trademark owners, rivals, consumers, and regulatory agencies may have diverse goals and interests. To ensure market competition, prevent consumer confusion, and protect trademark rights, trademark conflicts must be resolved.

Conclusion

Colour trademarks are a developing field of intellectual property law that integrates branding, consumer psychology, and intellectual property. They have transitioned from unconventional irregularities to recognised intellectual property, with varying techniques across jurisdictions. Proving distinctiveness, overcoming functionality objections, and demonstrating their origin in consumers’ perceptions are among the obstacles associated with registering and protecting these marks. The potential value of colour trademarks in brand differentiation and consumer recognition is demonstrated by successful registrations, such as Louboutin’s crimson soles, despite these challenges. The importance of colour trademarks is expected to increase as global commerce continues to expand. In order to navigate the complexities of colour trademark protection, businesses must undertake comprehensive trademark searches, consult with legal counsel, and carefully evaluate their chosen colours.

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[1] “See Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 215 (2d Cir. 2012).”

[2] “Linda B. Samuels, Jeffrey M. Samuels Journal of Public Policy & Marketing, Vol. 15, No. 2 (Fall, 1996), pp. 303- 307 (5 pages)”

[3] “Article 4 of Community Trade Mark Regulation”

[4] “Section 2(1) (ZB) of Trademarks Act 1999”

[5] “Section 10 of Trademarks Act 1999”

[6] “https://ipindia.gov.in/TM-Rules-2017.htm#26 – Representation of Trademarks.”

[7] “Section 9(1) of Trademarks Act 1999.”

[8] “J. Thomas McCarthy, 1 Trademarks and Unfair Competition § 7:26 at 236-37(Law Co-op, 1984 & Supp 1991).”

[9] V. A. Mohta, Trademarks, passing off, and Franchising (All India Reported Pvt Ltd, Nagpur 2004).

[10] “McCarthy, 1 Trademarks and Unfair Competition § 7:26 at 238-43 (cited in note 29)

[11] 456 US 844 (1982)

[12] “McCarthy, 1 Trademarks and Unfair Competition § 7:26 at 246 (cited in note29)”

[13] 211 U.S.P.Q (BNA) 201

[15]  [2018] EWCA Civ 2715

[14] 2004(1)RAJ214

[16] AIRONLINE 2018 DEL 170

[17] AIRONLINE 2018 DEL 256

[18] MIPR2007(3)170

[19] 2017 (70) PTC 66. (Del)