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What is a Colour Trademark?

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  • Post published:October 25, 2023
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A brand’s colour is distinct from a colour trademark. Even if a TM or ® symbol appears on a brand’s image, it does not imply that the colour or colours are protected by law. The TM and ® marks on McDonald’s and Starbucks indicate that the company owns the image, symbol, word, or a combination of both.

As per the 2017 Trademark Rules, the new regulations include provisions for colour marks. A colour mark is a non-traditional trademark that utilizes one or a combination of colours to identify a company’s goods or services.

What is a Colour Trademark? 

A colour trademark is an organisation’s symbol or logo to represent its brand, also known as a corporate identity mark. In this case, the brand is represented by a specific colour. Trademarks protect the use of colour within a specific market sector. For example, when you see chocolate candy wrapped in a purple wrapper, you instantly recognize it as Cadbury; when you come across a turquoise jewellery box, you associate it with Tiffany & Co. Pink, which is the signature colour of Vanish. These companies have the opportunity to establish through marketing that their colour trademark can distinguish their products from those of other manufacturers.

Section 10 of the Act allows a trademark to be restricted to a single colour or a combination of colours. This means that the law permits the registration of a single colour or combination of colours as a trademark to identify the source of goods or services.

What Are the Characteristics of a Colour Trademark? 

According to The Trade Marks Act of 1999, a ‘mark’ is defined as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, the shape of goods, packaging, or any combination of colours. The law allows for registering a trademark for a single colour or a combination of colours. Suppose an applicant seeks trademark protection for a specific colour. In that case, they must provide evidence that the claimed colour or colour combination is uniquely associated with them or exclusively designates their goods. Therefore, it is advantageous if the applicant can demonstrate that the specific colour is closely linked to them, their goods, and/or services.

Why Do Trademark Colours Matter? 

Colours can influence how consumers perceive a product. A colour may be metaphorically or figuratively linked to certain psychological responses. For example, green is often used for healthy or organic options, while blue can be associated with frozen or chilled foods. Some colour combinations or aesthetics complement each other effectively. Vibrant and eye-catching colours can have specific visual effects and improve text readability.

Certain products, whether industrial machinery or consumer goods, use specific colours to stand out from competitors. These colours are sometimes used to differentiate packaging; for example, Kodak uses a black and yellow box for its film, while Fuji uses a green box. Products may also have recognizable packaging styles. For instance, blue, orange, and yellow are commonly used for laundry detergents. Although the colours may be similar, the package and label designs may differ. Similar colours, label layouts, and packaging shapes can sometimes confuse consumers and lead to unintentional purchases of the wrong product.

Can You Register a Trademark for a Colour? 

In short, yes, you can register a colour as a trademark, but only under very specific circumstances. According to legal precedent, a ” functional ” colour – serving either a practical or aesthetic purpose – may not be protected as a trademark. A colour falls into the utilitarian category if necessary for the product’s use, quality, or pricing. If a colour’s exclusive use significantly disadvantages a competitor, it is considered aesthetically functional. To assess a colour’s functionality, these elements are considered:

  1. Whether the design (or colour) provides a practical benefit.
  2. Whether alternative designs (or colours) are available.
  3. Whether advertising emphasizes the design’s (or colour’s) practical benefits.
  4. Whether a simple or cost-effective manufacturing process led to the specific design (or colour).

It’s worth noting that the U.S. Supreme Court has stated that colour can be protected by a trademark “sometimes,” but only when that colour has acquired “secondary meaning” and identifies and distinguishes a specific brand (indicating its source).

Can You Trademark the Name of a Colour? 

Sometimes, you can trademark the name of a colour. For instance, UPS has registered “Brown” as a trademark. However, some applications may face challenges. In 2006, Syracuse University applied for a trademark for the term “orange” in connection with clothing related to its athletics department. The university’s athletic teams are known as the “Orange.” This trademark application received opposition from several colleges, including the University of Tennessee, Boise State University, The University of the Pacific, Oklahoma State University, Clemson University, The University of Florida, and Auburn University.

What Types of Trademark Colours Exist? 

Some notable examples of trademark colours include:

  1. Green-gold for Qualitex
  2. Tiffany Blue
  3. Target Red
  4. Cadbury Purple
  5. Barbie Pink
  6. Home Depot Orange
  7. T-Mobile Magenta
  8. Wiffle-Ball Yellow
  9. UPS Brown
  10. Coca-Cola Red
  11. Christian Louboutin Red Soles
  12. Pepto-Bismol Pink

Legal Aspects of ‘Colour’ Trademarks

The legal framework surrounding ‘colour’ trademarks is defined within the scope of the Act. According to the Act, a “mark” and a “trademark” can encompass a “combination of colours” or any similar combination thereof. Under trademark law, colour, in isolation, lacks inherent distinctiveness. However, a combination of colours can gain distinctiveness and become eligible for trademark registration when it acquires sufficient recognition. A combination of colours is deemed distinctive for trademark protection only when it can be demonstrated that this specific combination is so closely associated with a product or brand that that particular combination of colours can exclusively identify it.

To establish the distinctiveness of a colour trademark, these colours must be used in a specific manner to fulfil the trademark’s primary function of uniquely identifying the commercial origin of products or services. Using a distinctive combination of colours assists customers or the general public in associating the goods with their source, which not only expands the market for that particular source but also prevents others from benefiting from this unique mark.

When applying for a colour trademark, the applicant must provide evidence demonstrating that the claimed colour combination or colour is uniquely linked to them and that the public associates that colour with the goods mentioned in the application. This evidence can take the form of public surveys showcasing the association of the colour combination with the applicant’s product or brand. However, obtaining protection in this manner can be challenging without substantial supporting evidence. The onus is on the applicant to prove that the particular combination of colours has gained distinctiveness through continuous, bona fide usage in trade or has acquired secondary meaning. For example, while “Orange” as a trademark for a drink may be distinctive, claiming the colour orange for the packaging of those bottles may lack distinctiveness.

Perspective of Indian Courts

In the case of Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd. 2003 (27) PTC 478 Del, Colgate sought an interim injunction against the use of a trade dress and colour combination of one-third red and two-thirds white on the container of its tooth powder product. Colgate argued that Anchor was “passing off” Colgate’s goods as its own by adopting a similar trade dress, especially the red and white colour combination. The court emphasized that customers’ overall impression regarding the source and origin of goods is crucial. If illiterate, unsuspecting customers are confused about the source of goods based on the visual impression of colour combinations, container shape, packaging, etc., it constitutes passing off. In other words, if the first glance of an article misleads customers without delving into minute details of colour combinations or packaging, it amounts to confusion and passing off another’s goods as those of the original brand. In this case, the Indian judiciary acknowledged that colour is a part of trade dress and protected it, enjoining Anchor from using the red and white combination as trade dress.

In the Cadbury case, Cadbury UK Limited v. The Comptroller General Of Patents Designs And Trademarks & Société Des Produits Nestlé S.A. (Case No: A3/2016/3082), Cadbury successfully demonstrated that its distinctive shade of purple (Pantone 2865C) used on the packaging of its milk chocolates had gained a distinctive character. A public survey was submitted as proof, and protection was granted after a protracted legal battle with Nestle.

In the case of Deere & Co. & Anr vs. Mr. Malkit Singh & Ors. (CS (COMM) No. 738/2018), the Delhi High Court in 2018 granted protection to the plaintiff’s green and yellow colour combination, uniquely used on its tractors intended for agricultural use, based on reputation, distinctiveness, and instant source identification for the plaintiff’s products. This protection was granted, especially considering that this colour combination had been in use for 100 years, and the public widely associated the yellow wheels and green body with Deere tractors.

However, in a more recent judgment on May 25, 2018, in the case of Christian Louboutin v Abu Baker CS (COMM) No.890/2018, the Delhi High Court rejected the trademark application for a red colour on the sole of heeled shoes. The court ruled that the mark consisted of a single colour, which was invalid as per the definition of a mark under Section 2(1)(m) of the Trademarks Act, 1999, as it required a “combination of colours.” The Court emphasized that the use of the phrase ‘combination of colours’ in the Act signifies the legislature’s intention to disallow single-colour trademarks. This decision was distinguished from previous cases, including Deere & Company & Anr. v. Mr Malkit Singh & Ors., and Christian Louboutin Sas v. Mr Pawan Kumar & Ors., where the provisions of Section 2(1)(m) and Section 30(2)(a) were not considered. Section 30(2)(a) precludes a claim for infringement when a person other than the registered owner of a trademark uses the mark to indicate a characteristic of a good or service. The court interpreted this provision as meaning that the mark should ‘indicate’ a characteristic instead of being ‘in relation to’ a characteristic. Despite Section 27(2) of the Trade Marks Act, 1999, mandating that nothing in the statute shall affect the rights of a person filing for passing off, the court refused the passing off remedy, which is a common law remedy and independent of Indian statutes, on similar grounds.

Paytm vs. PayPal: A Case of Trademark Dispute

The Paytm vs. PayPal dispute came to the forefront following the government’s introduction of the demonetization scheme a few years ago. With an urgent need for cashless transactions becoming prevalent, Paytm experienced a sudden surge in popularity. Its daily transactions skyrocketed from 2.5 million to 7 million in the initial days post-demonetization. This rapid growth and increased valuation caught the attention of global players, including PayPal.

In the complaint filed, PayPal accused Paytm of extensively mimicking its two-tone blue colour scheme. Both logos featured a similar arrangement, with the first syllable appearing dark blue and the second in light blue. Additionally, PayPal pointed out that both brand names begin with the word ‘Pay,’ and consumers tend to recall the initial syllable more prominently, potentially leading to confusion among consumers. The fact that both companies are engaged in the same line of business, namely online payments and transactions, only exacerbates the potential for consumer confusion.

In light of the PayPal vs. Paytm case, here are several key considerations:

  1. Conduct a trademark search during the company’s formation to preempt future disputes or allegations.
  2. Ideally, perform the trademark search before finalizing the company name to avoid potential conflicts.
  3. For enhanced protection, it is advisable to register the brand name as a trademark.
  4. The trademark search can be conducted by consulting the online trademark directory to assess the similarity and resemblance of the brand or company name compared to existing trademarks.

The process of registering a colour trademark can be intricate and time-consuming. Therefore, it is imperative to exercise utmost caution when engaging in activities related to trademark registration.

Iram

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