Protection of Color Trademarks under the Indian Trademark Law
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A trademark refers to a recognizable expression, design, or sign uniquely identifying the products or services of a specific source and differentiating them from those of others. A trademark may be located on the packaging, voucher, label, or the product itself. Other than traditional or conventional trademarks, another category of trademarks exists, known as non-traditional or non-conventional trademarks, including motion marks, sound marks, scent marks, color marks, hologram marks, shape marks, 3D marks, position marks, taste marks, and texture marks. The single color or color combination of a product’s packaging can obtain Trademark Protection only if it is capable enough to be recognized by the general public as unique or belonging to a specific brand. A few examples of widely known color trademarks include Ferrero Rocher’s combination of golden and brown, Cadbury’s purple, Tiffany’s blue, etc.
In India, the Trade Marks Act of 1999 (referred to as ‘Act’ further in this article) safeguards the owner’s exclusive Trademark Rights to use the mark, thereby preventing any unauthorized or illegal use of the mark from confusing the minds of the general public. It aims at promoting the products or services in the marketplace while restricting the competitors from using the trademark and making profits through infringement. It also encourages safeguarding the interests of the traders and consumers in the market.
Under Section 2(1)(zb) of the Act, any word, label, name, device, brand, ticket, signature, heading, letter, numeral, the shape of products, packaging, the combination of colors, or any combination thereof can be registered as a trademark if the same fulfills the criteria of distinctiveness and graphical representation. However, the complications and issues arise in the cases falling outside the ambit of conventional or traditional trademarks, where the registration of which becomes arduous to be given an exclusive status.
Law on Color Trademarks in India
The definition of the terms ‘trademark’ and ‘mark’ provides for “combination of colors” or “any combination thereof.” Under the Act, a color is inherently indistinct; however, with sufficient acquired meaning, a color combination can gain distinctiveness and become capable of being registered as a trademark. A unique combination of colors can obtain trademark protection only if it is proved that such a combination is closely associated with the brand or product in question, and the brand or product can be recognized well by that specific combination.
Proving the distinctiveness or uniqueness of a proposed color trademark requires using the colors in a way that they perform the trademark function of distinctively or uniquely identifying the commercial origin of the products or services in question. The use of a distinctive or unique combination of colors helps the general public relate well to the products or services, which, in turn, enhances the market value of a specific source and excludes others from extracting benefits from the unique mark.
When we talk about filing a Trademark Application for a color mark, the applicant needs to provide evidence demonstrating that the color or combination of colors is solely associated with him, and the general public associates the same with the products or services specified in the application. The piece of evidence can be presented in the form of public surveys proving the association of the color or the combination of colors with the applicant’s brand or offerings.
It is essential to note that acquiring trademark protection for a color mark in the absence of sufficient supportive evidence may be difficult. The burden in this scenario is on the trademark applicant to demonstrate that the specific combination of colors or color has acquired distinctiveness in the course of trade or has acquired secondary meaning due to bonafide uninterrupted usage. For instance, ‘Orange’ may be distinctive as a trademark for a drink, but the orange color claimed for the packaging of the drink’s bottles would be non-distinctive.
Judgment of Indian Courts on Color Marks
- Cadbury UK Limited vs. The Comptroller General Of Patents Designs And Trademarks & Société Des Produits Nestlé S.A. (Case No: A3/2016/3082)
In this case, the British multinational confectionery company, Cadbury, proved that its distinctive and unique purple shade, i.e., Pantone 2865C, used on the packaging of its milk chocolate wrappers, gained a distinctive character over the years. A public survey was submitted as verification of this assertion, and the equivalent was granted on 1st October 2012 after a long-drawn-out legal battle with the Swiss multinational food and drink processing conglomerate, Nestle.
- Colgate Palmolive Company vs. Anchor Health & Beauty Care Pvt. Ltd. 2003 (27) PTC 478 Del
In this case, Colgate sought an ad-interim injunction against the use of trade dress and a color combination of one-third red and two-thirds white, in a certain order, on the container of the product, Tooth Powder. It alleged that the defendant, Anchor Health & Beauty Care, adopted similar trade-dress, specifically the color combination of red and white, and was passing off the product of Colgate as its own.
The Court, in this case, held that from the visual impression of a color blend, shape of the container, packaging, etc., it is the general impression that a customer gets concerning the source or origin of the merchandise. It further mentioned that if the first glance of a product, without getting into the details of the layout, color combination, or appearance of the packaging or container, gives the impression as to near or deceptive similarities concerning these ingredients, it undoubtedly becomes a matter of confusion and amounts to passing off one’s products as those of some other person or entity to extract undue benefits from the goodwill and reputation of the latter.
In this lawsuit, the Indian Judiciary recognized color as an integral part of trade dress and granted protection to it by restraining Anchor from using the red and white color combination in the order defined as trade dress on the container and packaging.
Final Thoughts
When allowing the trademark registration of color marks (belonging to the category of non-conventional trademarks), the courts have made it pretty clear that the test of distinctiveness is exceedingly strict. Therefore, it is obvious now that the registration of a combination of colors requires some ‘plus factor’ to be in place or secondary meaning to the color when attached to the product in question. Kindly note that there is no exhaustive test concerning whether the combination of colors has obtained distinctiveness; it all depends on how the customers perceive such a combination and how the courts can catch it. ✅ For more visit: https://www.kashishipr.com/
