Can Colours Be Trademarked?

A trademark can be defined as a design, phrase, symbol, slogan, or word that distinguishes a brand’s products or services from those offered by other sources. Aside from the traditional trademarks such as symbols and logos, there are a few unconventional or non-traditional trademarks. For example, colour, smell, shape, sound, etc. This article proposes to discuss colour trademarks and how they are regulated in India.

Only when a colour or a combination of colours is recognised by the public in connection with a particular brand and indicates the source of the product, it receives trademark protection. Trademarking a colour or a combination does not mean owning the colour; it only protects against the use of a similar colour or combination in a similar industry.

Colour Trademark

A trademark is a signifier of a brand, and a colour or a combination of colours can be used for the same purpose. A colour trademark is a symbol used by an organisation to represent itself. It is used as an identity mark by the companies, and when people see it, they recognise the source instantly.

If a colour is trademarked, it protects the use of the same colour in a similar industry by other traders. For example, Barbie’s pink colour, a colocate in a purple wrapper, is associated with Cadbury, Vanish’s pink colour, etc. Colours have a lasting effect on the public; many companies have adopted a specific combination of colours or colours for their product, and the general public recognises the brand by just looking at the colour.

Colours play a vital role when consumers are not able to remember the trademark logo because of illiteracy or an unknown language. However, it must be noted that a colour or a combination of colours must be capable of distinguishing the enterprise’s products from the others in the market. It should be unique and distinctive.

Types of Colour Trademark

There are two types of colour trademarks, namely:

a)      Single-color trademark

Where a single colour is registered as the trademark of the product. For example, 3M’s Canary Yellow for the post-it notes. The colour has to be very peculiar and unusual. It should be recognised by the public and be distinctive. If a single colour is trademarked, it can be easily opposed by other players in the market, considering the fact that the number of colours is limited.

b)     Combination colour trademark

Where a combination of colours is registered as a trademark. For example, the blue and silver for Red Bull It is not a very challenging task to register a combination of colours as a trademark as compared to a single colour. The combination of the colours has to be unique, bold, and recognisable by the public. The recognition factor matters the most.

What Colours Cannot Be Trademarked?

According to the basic principles of colour trademarking, especially in the US, a functional colour cannot be trademarked. For example, if a company makes grass cutters, they can’t outright own the green colour because green is considered the colour of lawns and is therefore a functional colour.

In the case of Deere, the company does not own the green colour outright. Competitors in the market are allowed to use green in their brand design as green is a functional colour. The colour symbolises vegetation—grass, fields, etc.—and Deere works in that area.

On the contrary, Qualitex has registered the colour green as a trademark for their dry-cleaning pads. But here, green is a “secondary” colour and not a functional colour.

The following list of elements helps assess a colour’s usefulness:

• Whether the design (or colour) offers a practical benefit,
• Whether other designs (or colours) are available
• Whether advertising highlights the design’s (or colour’s) practical benefits,
• whether a very easy or affordable manufacturing process led to the specific design (or colour)

Colour Trademarking In India

Under Section 2(1) of the Trademarks Act of 1999, a colour or combination of colours can be trademarked in India if it meets the following requirements:

1. Capable of being graphically represented
2. Unique and distinctive in nature and is capable of distinguishing the goods or services of one trader from those of another.

The Trademark Act of 1999 includes “combination of colours” in the definition of trademark under Section 2(1)(ZB). However, the act does not provide for the registration of a single colour, nor is it restricted under the act. Therefore, in India, the law reorganises colour as a trademark and says that it adds to the uniqueness and distinctiveness of a trademark.

The Draft trade mark manual provides for the registration of a single colour as a trademark if it is unusual or peculiar and is recognised by traders and consumers. The Indian trademark registry allows for the registration of a single colour mark in very rare and exceptional circumstances but is subject to objection under Section 9(1)(a) of the Trademarks Act of 1999.

For registration, the applicant is required to give the exact description of the colours according to the International Classification of Systems of Colours. He should describe the components of the colour and how they are related to the representation.

If the applicant decides to register combination protection of colours, he is required to prove that the claimed colour combination or colour is exclusively associated with their goods and that the combination or colour is likely to indicate to the relevant consumer or other traders the source of the product. The applicant must prove the distinctiveness of the colour or the combination. However, due to a lack of distinctiveness, the registration of a single colour is difficult.

Section 10 of the act provides for the limitation of colour; a trademark may be limited to a colour wholly or partially, and it is upon the courts to decide the uniqueness of the combination or the colour. If the law allows for the registration of a colour or a combination as a trademark, it is with the objective of recognizing the source of goods or services.

Judicial Precedents Relating To Colour Trademarks

In the case of Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd. (2003), Colgate sought an injunction at the Delhi High Court against Anchor for using the same trade dress and the colour combination of red and white (one-third of red and two-thirds of white) on its toothpowder cans.

Colgate alleged that Anchor was “passing off” Colgate’s goods as its own. The trade dress, as well as the shape of the can, was protected and developed by Colgate over a long period of time in the market. The court compared both cans and observed that both cans looked similar in the eyes of a layman.

The court also emphasised that illiterate, unwary, and gullible customers who use toothpowder get confused as to the source and origin of the goods that they have been using for longer periods by getting the goods in a container having a particular shape, colour combination, and getup, which amounts to passing off. In the instant case, the court recognised colour as a part of the trade dress provided protection to Colgate and prohibited Anchor from using the same trade dress.

In the case of Cadbury UK Limited V. The Comptroller General Of Patents, Designs, And Trademarks and Société Des Produits Nestlé S.A., Cadbury proved the shade of purple on the wrappers of their milk chocolates was distinctive. In this case, a public survey was also conducted to ascertain the facts.

In the case of Deere & Co. &Anr. vs. Mr Malkit Singh &Ors., the court granted protection to plaintiffs. It ruled that the combination of yellow and green on Deere tractors was distinctive and indicative of their products, and the combination had been in use for 100 years. Therefore, the public would associate the yellow wheels and green body combination with Deere Tractors.

In the case of Christian Louboutin v. Abu Baker CS (COMM), the court ruled that the red colour on the sole of their heeled shoes on the point that a single colour is not included in the definition of a mark in the Trademarks Act, 1999.

The court ruled that the plaintiff will not be granted relief under the Act but can claim unfair competition, the existence of dilution, etc. The court also ruled that Section 30(2)(a) in the present case is complete disentitlement to the reliefs claimed by the plaintiff.

In the case of PayTm vs. Paypal, Paytm accused PayPal of copying its colour scheme, and the court gave the final judgement in favour of Paytm.

The Issue Of Free Competition And Colour Trademarking

The availability of colours or combinations is restricted and can be exhausted after a certain point in time. This will result in unfair competition in the market and hinder free competition, as if a colour or a combination is registered by one trader, it cannot be used by another trader for similar products. In that situation, the same colours or combinations for different services may be allowed on the market.

 The Anti-Competitive Consequences

If the colour selection theory is considered, if colour is registered for a service, it will give exclusivity to the traders who have registered it, and the competitors will be restricted from using the same colour for similar services.

In that case, it is upon the court to decide whether the colour or the combination is distinctively associated with the product and prima facie indicates to the relevant customer the source of the product.

Although this will also create a restriction on the whole swathe of the colour, a regular consumer will not be able to distinguish between colours from a close spectrum.

Can Two Brands Have The Same Colour?

A colour or combination can be registered, but it is not the sole owner. Trademarking a colour does not mean owning that colour outright. It only gives the right to use that specific colour for a product or service in a specific industry. In different industries, it is very unlikely that two products could be mistaken for one another.

In the case of “Barbie,” its distinctive pink colour is registered in more than 100 categories, but it’s doubtful that the product will be misinterpreted as a similar coloured “Pepto-Bismol.” The brands “Target” and “Coca-Cola” are both equally applicable. While “Target” may offer “Coca-Cola” products, it’s very unlikely that customers will confuse the two brands for one another.

Conclusion

Colour trademark increases the brand value of the product and leaves a long-lasting impression on the general public. The test of distinctiveness is very strict in the case of colour trademarking, especially for single-colour trademarks. Though there is no exhaustive test for colour trademarking, it on depends on the recognition factor, how the relevant consumers perceive it and how the courts capture it.  

References

i)    Color Trademarks in India: Everything You Need To Know – TMReady (Formerly The   Trademark Search Company)

ii)   Importance and Challenges of Protecting Colour Marks in India – S.S. Rana & Co. (strange. in)

iii)   What is a Colour Trademark? (vakilsearch.com)

iv)   Draft Manual of Trade Marks, Chapter III

v)   India: It’s how you look that matters – World Trademark Review

This article has been contributed by Devika T K, a student at University School of Law and Legal studies, GGSIPU.