The word trademark in common parlance means the identity of a particular entity. It is not only the conventional marks but also unconventional marks like sound, scent and colour that can be registered now. Today, consumers are looking for a good not only for its inherent use but also for other factors like its appeal and this is particularly true for the younger generation. While we grew up munching Chocolates like Cadbury, we now identify it not only by its name but the colour of the packet in which it comes wrapped. Shoe brand Louboutin red soles, New York-based jeweller Tiffany & Co’s trademarked blue box and Telecom brand T-Mobile specific shade of magenta are some examples of the colour marks. When there are goods entering the market with the same use, you need to distinguish your goods from other, so that it stands out. As a colour becomes an identity of the brand, People begin to associate the brands with its Color, and that’s where colour marks come into play.

“Trademark” is defined as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours.[1] A colour that appeals to consumers, and is easily spotable increases its commercial value. Color Marks is a valuable asset for any business entity and also an important marketing business strategy. It is also a strategy for brand identity and product differentiation in a competitive market. Thus, each entity tries to choose a colour that would help it stand out, make its brand different and easily distinguishable.

A colour can also be USP (unique selling point) of a brand.This can be illustrated by the recent case of Christian Louboutin v. Pawan Kumar, in which the Delhi High Court restrained Karol Bagh based sellers from selling footwear bearing his registered Red Sole trademark. The Deere & Co.[2], which manufactures agricultural equipment and vehicles sued the defendants, for using its word mark “John Deere”, the logo, the registered trademark including trade dress and the colour combination thereof in relation to their agricultural equipment and vehicles.

Because trademark is an exclusionary right, it has the effect of barring others from using it for the product for which it is registered. Applicant desirous of getting registration for a colour mark needs to explicitly mention it in their application along with formalities mentioned in Chapter II of the Trade Marks Rules, 2017 which provides the procedure for registering trademarks which includes the registration of combination of colours as a distinctive feature of the trademark. But, how to determine whether a colour can be registered or not?

Various test like the colour depletion test and the acquired distinctiveness (like Louboutin) are applied by the Courts to answer this question. The most common test of acquiring distinctiveness by use also has certain limitations. Therefore, the test seems to be that if the applicant can show that by virtue of its use, it has acquired goodwill and has come to be associated exclusively with the applicant’s trade to the satisfaction of the trademark officer, it can get the colour mark registered for itself. The colour depletion theory comes into play only in case of blanket prohibitions.[3]

The courts would not allow for registration the colours that are functional for various purposes. Further, a trademark is always used for a category of good or services and the act itself bars from registering a colour for a class.

Unconventional trademarks have now been used by the entity for a long time. On the surface, this might appear unfair but it also challenges to forge creativity among the upcoming entity, to form a unique identity by creating or choosing a colour mark keeping in mind the idea of their brand. The Trade Marks Act, 1999 provides for the registration of combination of colour but it is not very clear if a single shade can be registered or not. As of now, there has been no reported case where a single shade has been trademarked in India. In the absence of an explicit bar for registering a single shade and the broad definition of the trademark, it cannot be said that this cannot be done in near future.

References

 [1]   http://mentalfloss.com/article/27396/9-trademarked-colors

[2]   https://spicyip.com/2013/01/guest-post-colours-as-non-conventional.html

[3]   Trademark Rules, 2017

Footnotes

[1] Section 2(1) (i)(viii)(zb) in The Trade Marks Act, 1999.

[2] Deere & Co. & Anr. vs S. Harcharan Singh & Anr.

[3] Colgate Palmolive Company vs Anchor Health And Beauty Care Pvt., 108 (2003) DLT 51.

ABOUT THE AUTHOR

Mousomi Panda

Mousomi is a third-year student pursuing B.A. L.L.B. from University School of Law and Legal Studies, (IP University). She has an active interest in issues that plague the society. She’s a thinker, writer, and reader, though more of a dreamer. She’s interested in legal research in the field of ADR as well as IPR.