Painting a brand: The Legal Journey of Colour Trademarks in India

Introduction

From Cadbury’s regal purple to Triffany’s robin-egg blue, colours can be used as a powerful brand identifier that go beyond aesthetics. The identification of colour brand in India is however legally complex. In India, Colour trademarks are the subset of non-conventional trademarks which also include sounds, odour, and structure.

This blog explores India’s colour mark laws, emphasising on the concept of uniqueness, usefulness and competitiveness issues while incorporating contemporary elements like neuromarketing and the difficulties of maintaining brand identification in digital era.

Non-conventional and colour trademark – Legal foundations

Colour plays a crucial role in how a mark is visually perceived, and when a word is paired with a colour to represent a brand's products, it becomes an effective trademark. According to Section 2(1)(b) of the Trade Marks Act, 1999 , trademarks are defined broadly, allowing non-conventional trademarks to be recognized and acknowledged.

Numerous trademarks has been registered successfully in India. For example, companies like Yahoo Inc., Colgate, and ICICI Bank have obtained successful trademark registrations.

The revised Trade Marks Rules have allowed for digital graphical representation, which simplifies the registration process for these marks. However, according to Section 9 of the Act, marks such as single colours are frequently viewed as lacking inherent distinctiveness since they are common elements found in the public domain.

Distinctiveness in colour trademark

A mark is deemed inherently distinctive if it can immediately identify the items or services provided by one entity as separate from those of others, without requiring prior use or consumer education. When a mark does not possess inherent distinctiveness, it may still be eligible for trademark protection if it has developed distinctiveness over time through extensive and consistent use. This indicates that consumers, through prolonged exposure, have learned to associate the mark solely with a specific source or product.

For a trademark to be registered, the mark must communicate an ability to differentiate between goods and services between different entities. This ability to identify or differentiate can either be inherent or developed over time through its usage. The same principles apply to unconventional trademarks. Whether it’s a shape, colour mark (a visible sign), or attributes like texture, taste, or smell, the competitor must demonstrate a distinguishing element in the mark that establishes a connection in the consumer's mind regarding the mark's unique identity and origin.

In the Cadbury litigation, the court further highlighted the importance of the “Pantone Code,” which designates numerical codes to different shades of colour to ensure accurate identification as it has been using it since 20th century and the public has started associating with it and a single colour functions as a “sign” under European union law . Therefore, got registered in UK, to register a colour mark, it must meet a three-pronged test: functionality, graphical representation, and distinctiveness.

Colours leave a significant visual impact on a person's mind and are effective in marketing. According to a market study, colours can enhance brand recognition by up to 80%. Notably, some of the world's most renowned brands are identified by specific colours, like the red and yellow logo of McDonald's or the purple of Cadbury Chocolates.

Consumers link particular brands to specific colours, which indirectly influences their purchasing preferences. The use of a similar colour in the packaging of a different brand may lead to consumer confusion.

Functionality doctrine

Functionality associated with the functional or descriptive element of a mark is significant. For instance, “pink-toned milkshake cartons” may be assumed to represent a strawberry flavour; likewise, claiming exclusive rights to the colour red for a fire extinguisher is problematic since red signifies danger and is highly descriptive.

In situations where a colour conveys its inherent qualities in a way that leads to a technical outcome, trademark law does not allow for its protection. The legal system tends not to favour colours that exhibit a functional characteristic.

There has been contention over granting a trademark for a single colour due to concerns that it could lead to monopolization by specific traders, resulting in unfair competition in the marketplace.

Despite various objections, the registration of a single colour mark has been a widely adopted practice for several years, provided it achieves a level of distinctiveness that surpasses that of more conventional trademarks.

The United States was the pioneer in acknowledging colour alone for trademark registration in the case of Qualitex Co. v. Jacobson Prods. Co. (the Qualitex case) in 1995. This approach has also been adopted in India.

Competition concern

In the Société des Produits Nestle SA v. Cadbury , Cadbury submitted a request for registering a trademark of single colour. the Court emphasized that granting protection solely for one colour, rather than a combination, would result in Cadbury a legal monopoly over purple packaging and would provide them with an unfairly disadvantage over rival brands.

It is important to promote and reward human creativity through the provision of intellectual property rights. These rights empower the creator to restrict others from utilizing their inventions, designs, or creations.

However, there is also a need to limit and prevent anti-competitive behaviour that may arise from exercising these intellectual property rights. If any trade practices or conduct that are anti-competitive become apparent and harm consumer interests or the public good, they should be challenged under the competition policy or law.

Neuromarketing and non-conventional trademark

Consumer neuroscience explores how brain structure and function influence purchasing choices. Neuromarketing applies it to achieve specific commercial results. It monitors changes in blood flow and oxygen levels in the brain while test subjects view various well-known brands.

Each brand possesses a unique neural signature, with distinct brain areas indicating feelings such as “excitement,” “ruggedness,” or “sophistication” when exposed to the brand stimuli. By analyzing these neural signatures, researchers could differentiate whether a participant was considering APPLE or MICROSOFT, COKE or PEPSI.

Advances in technology for measuring biometric responses to external triggers have become more refined and, consequently, more useful for market research. Metrics like heart rate, breathing, and skin conductance have been utilized to assess audience arousal and attentiveness.

Protecting brand identity in digital era

Cybersquatting refers to the practice of acquiring, buying, or trading web addresses to exploit the reputation of another person, considered a criminal act. Reverse cybersquatting is perpetrated by large corporations, while the victims are often smaller businesses or individuals who lack the financial resources.

Meta tags function similarly to small labels found on clothing; by examining these tags, individuals can learn a great deal about the product's identity and quality and are often misused online to generate misleading results associated with trademarks and domain names belonging to legitimate owners.

Rise in the metaverse and virtual goods branding, there are the host of legal issue arise with it. For brand owners, intellectual property rights issues from patent to copyright to trademark. Some of the brands like Nike and companies of fashion, music, footwear, cosmetics has filed numbers of applications in U.S. patent and trademark agency.

Some companies like Hermes don’t use their brands in metaverse as unauthorised meta use tarnishes the image of the unique brand. Trademark owner should use their claim for false advertising and passing off along side infringement.

Many brand owners often choose to acquire web domains that closely resemble their existing trademarks; for example, a law firm with a trademark for “Pool” will prefer “www.pool.com” rather than “www.lawcunt.com.”

The core issue arises from the fact that the “Internet Corporation for Assigned Names and Numbers” (ICANN) grants web addresses on a “first come, first serve” basis that undermine trademark registration.

Consequently, domains have emerged that carry trademark protection. However, the holder of the domain does not possess any real authority or legal claim.

Indian case law and global insight

As per the section 9 of the Trade marks act 1999, it states the ground for refusal of trademark registration, certain types of marks including those that lacks distinctiveness and likely to cause confusion. In Colgate Palmolive Co. v. Anchor Health and Beauty Care (P) Ltd. , the court dismissed the claim acknowledging an exception that no entity can monopolize a specific colour. However, if a combination of colours has been consistently used by a manufacturer for an extended period and has acquired secondary meaning, such a combination could be eligible for trademark protection, provided it meets all the other requirements of a valid trademark.

Similarly, in Christian Louboutin regarding the infringement of its trademark related to the red sole, the High Court of Delhi examined the definitions of marks under section 2(1)(m) and trademarks under section 2(1)(b) of the Trade Marks Act, 1999i, and concluded that single colour marks do not qualify as trademarks and therefore cannot be registered.

Courts are often reluctant to allow the registration of colour marks due to concerns over monopolization of limited colours. For example, while Cadbury achieved the registration of the distinctive royal purple particular shade (Pantone 2685C) associated with ‘Dairy Milk’ as a colour mark in United Kingdom, but application for the registration was denied by the Indian Trademark Registry.

Global perspectives help in understanding fundamental elements of IPR and competition law, Thus, we should approach with caution while applying the legal principles from those regions to solve issues in India.

We get inspired from Western approaches to market regulation, but it is crucial to remain alert and be cautious about uncritically adopting Western regulatory frameworks. Instead, our focus should be on advancing beyond these models to sidestep the regulatory hurdles they have encountered during their own development.

Conclusion

Non-conventional trademark challenge traditional intellectual protection especially of colours brand. while distinctiveness and competition persist, there is need to protect the brand identity with strong legal clarity with flexible enforcement while preventing monopolisation ensuring innovation and fair competition in the market.

Author: Harshita Kumari Bharti, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.