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Can you trademark a color and what are the landmark case laws

September 19, 2021
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This article is written by  Sohini Goswami, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws, from LawSikho.

Introduction

Mere color, unspoiled by meaning, and unallied with definite form, can speak to the soul in a thousand different ways” – Oscar Wilde

Trademark law is an eminent law of all times. Commercially speaking, it adds the required character to a business, company, or organization. Therefore, protection of trademarks in special characteristics such as color, shape, size is garnering popularity with each passing day. Hence, leading to a growing need for protection of the same.

Trademark law protects the owner’s exclusive rights to use the mark, thereby preventing any unauthorized use of the mark which shall confuse the minds of the masses. It aims at the promotion of products or services within the market, thereby simultaneously restricting competitors from using the mark and gaining profits through imitation. It also aspires to guard both the interest of the buyer and the traders within the market.

Through this article, I aim to highlight the legal implications concerning the trademark of color, along with that we will also study the landmark cases involved with this issue and thereby conclude about what can be done to advance protection in this regime.

What is a trademark?

Under the Trade Marks Act, 1999, (“Act”), as per section 2(1)(zb), “trademark” means a mark capable of being represented graphically and which is capable of distinguishing the products or services of one from those of others and should include the form of products, their packaging, and combination of colors and as per section 2(1)(m), “mark” includes a tool, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of products, packaging, or combination of colors or any combination thereof.

This implies any word, gadget, brand, heading, letter, numeral, and so forth are frequently included inside the rundown if peculiarity and graphical portrayal are available and henceforth be enrolled as a trademark. Notwithstanding, the matter emerges in cases that fall outside the ambit of ordinary or customary trademarks, the enlistment of which becomes difficult.

A trademark is a sign of identity, design, or expression which recognizes products or services of a specific source from those of others. A trademark could also be a package, a label, a voucher, or the merchandise itself. Aside from the ordinary trademarks like general logos, gadgets, or images, there exists another classification of trademarks, which are alluded to as eccentric/non-customary imprints. These are mainly found within smell marks, shape marks, sound marks, or color marks. To be indispensable one ought to shift and be particular. Tiffany’s blue, Cadbury’s purple or Ferrero Rocher’s blend of brilliant and brown are such unmistakable items that have applied scholarly innovativeness and expertise to be known in their industry.

What can fall under ‘trademark’?

The meaning of “mark” and “trademark” as set down inside the Act accommodates “blend of colors” or “any mix thereof”. Under Trademark law, colors are intrinsically undefined, however, a combination of tones, with adequate procured significance, can acquire uniqueness and is fit for being enlisted as a trademark. A combination of tones could likewise be considered unmistakable for trademark protection just when it tends to be shown that the mix of colors is so firmly identified with an item or brand that the product or brand is frequently perceived by that specific blend of tones as it were.

To prove the distinctiveness of a color trademark, the colors should be utilized in a specific manner to perform the trademark function of uniquely identifying the commercial origin of products or services. The utilization of a specific combination of colors helps customers or the overall public to relate the products to their source which helps to extend the market of a particular source and also excludes others from deriving any benefit accrued from this unique mark.

While petitioning for a color trademark, a candidate is needed to submit proof to bring up that the said color blend or color that has been asserted is exclusively identified with the candidate, and consequently the majority connects the color with the items referenced inside the application. The proof is frequently inside public overviews, showing the relationship of the combination of colors with the candidate’s item or brand. In any case, without adequate strong proof, gaining security during this way could likewise be troublesome. The weight lies on the candidate to demonstrate that the particular mix of colors has gained uniqueness in course of exchange or has procured optional significance due to bonafide continuous use. For example, Orange as a trademark for a beverage could likewise be unmistakable yet when the color orange is asserted for bundling of a set of jugs would be non-particular.

Landmark case laws for sound marks in trademarks

In the case of Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd.

Facts:

Colgate was on the lookout for an ad-interim injunction against the utilization of trade dress and color combination of one-third red and two-third white, in a specific order, on the compartment of its item, i.e. Tooth Powder and therefore alleged that the defendant (Anchor Health & Beauty Product) by adopting the color blend of “red and white” has committed the offence of passing off.

Issue:

Anchor was “passing off” the particular productof Colgate as its own.

Court’s Observations in light of rules applied:

The court held that it is the general impression that a customer gets as to the source and origin of the merchandise from the visual impression of a color blend, shape of the compartment, packaging, etc. In the event that ignorant, unwary, and guileless customers get confused concerning the source and origin of the goods which they have been utilizing for longer periods by way of getting the goods in a holder having a specific shape, color blend, and look, it adds up to passing off.

Hence from my standpoint, if at the first glance of the article without delving into the minute subtleties of the color combination, look, or design appearing on the compartment and packaging gives the impression as to misleading or approach similitudes in respect of these ingredients, it is an instance of disarray and sums to passing off of one’s merchandise as those of the other to ride upon the generosity and notoriety of the latter. In the said milestone case the Hon’ble Court acknowledged color as a part of trade dress and secured it in the present case by injuncting Anchor from utilizing the color blend of red and white in a specific order as trade dress on the compartment and packaging.

Additionally in the landmark Cadbury case, Cadbury UK Limited V. The Comptroller General Of Patents Designs And Trademarks & Société Des Produits Nestlé S.A, Cadbury demonstrated that its distinctive shade of purple (Pantone 2865C) on the cover packaging for its milk chocolates had acquired a distinctive nature. A public survey was submitted as verification of this postulation and the equivalent was granted on 1st October 2012 after a tedious legal battle with Nestle.

In the case of Deere & Co. & Anr vs. Mr. Malkit Singh & Ors, the Delhi High Court in 2018 conceded immunity to the Plaintiff’s green and yellow color blend utilized exceptionally on its tractors fabricated for agricultural use based on goodwill, distinctiveness, and instant source of identification of plaintiff’s goods all the more so as such color blend was in use for centuries and the masses had come to associate the yellow wheels and green body with Deere tractors.

The Delhi High Court in one of its latest judgments on May 25, 2018, on account of Christian Louboutin v Abu Baker, rejected the trademark of red tone on the sole of heeled shoes on the point that, the mark was just simply comprising of a solitary red tone which is invalid as per the definition of a mark under Section 2(1)(m) of the Trademarks Act, 1999 as it requires a mark to be a ‘combination of colors’. ‘Combination of colors’ is ‘sine qua non’, which means accordingly, a solitary tone, as contrastingly recognized from a blend of tones, cannot be a mark, falling in the definition of “mark” as well as a ‘color mark’. The Court opined that the utilization of colors to express ‘combination of colors’ in Section 2(1)(m) shows the objective of the legislature to not allow single-tone trademarks. The Court differentiates the colors case from the previous Deere & Company & Anr. v. Mr. Malkit Singh & Ors., and Christian Louboutin Sas v. Mr. Pawan Kumar & Ors., expressing that in both the cases, the law laid down in Section 2(1)(m) and Section 30(2)(a) were not thought about during its analysis. Section 30(2)(a) precludes an infringement claim, expressing that, when an individual other than the enlisted proprietor of a trademark utilizes the mark to showcase the quality of a product or service, the trademark has not been encroached. 

Here, the court seems to have misread the provision to mean mark ‘in relation to’ a trademark instead of the mark ‘indicating’ a trademark. Furthermore, the court rejected the passing off remedy which is a customary law remedy and autonomous of Indian statutes additionally, on comparable grounds, despite Section 27(2) of the Trade Marks Act, 1999 laying down that nothing in the law shall influence the privileges of an individual filing for passing off.

Conclusion

When permitting non-ordinary trademarks like the combination of tones as trademarks, the courts guarantee that the trial of uniqueness is exceptionally severe. It is, subsequently, obvious that for the registrability of a combination of shadings as trademarks there should be a ‘or more’ factor or auxiliary significance to the shading when it is joined to the item. Be that as it may, there is no thorough test with regards to whether the combination of shadings has obtained uniqueness and everything relies on how the clients see the combination of tones and how the court can catch it.

References

[1] https://indiankanoon.org/doc/1190072/ visited on 5th August 2021 at 5:50 pm. [2] 2003 (27) PTC 478 Del [3] Case No: A3/2016/3082 [4] CS (COMM) No. 738/2018 [5] CS (COMM) No.890/2018 [6] CS (COMM) 738 of 2018 [7] CS (COMM) 714 of 2016

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