Threshold requires for the registration of colour based trademark in India
- Jul 20
- 9 min read
Introduction : In the modern industrial era, the identity of a brand is no longer limited to its name, logo, or symbol. Colours have also emerged as an important identity of brands by which they physiologically connect to the consumers and create a lasting impression in the minds of consumers. The continuous use of a particular colour may over time become so closely connected with a brand that consumers are able to recognize the source of the goods and services without looking at the name of the company.
However the mere use of a colour by a brand does not automatically make it eligible under Trademark laws. The basic requirement is that the colour must be capable of distinguishing the goods or services of the brand from the others. A consumer upon seeing the colour should be able to associate it with a particular commercial source. In simple terms the colour itself should speak for the brand. It should not be perceived as a decorative element, an attractive design or a part of the ordinary packing of the product. Rather it must create an independent identity in the mind of consumers.
This makes consumer perception one of the most important factors in determining whether a colour can be protected as a trademark. The real issue is not simply how long or how extensively a brand has used a particular colour but whether such use has created a distinct connection between the colour and the brand in the mind of the public. Therefore a colour can perform the function of a trademark only when consumers begin to recognize it as an indicator of the origin of the particular goods and services.
Consumer recognition over Time
One of the most significant requirements for registration of colour trademark is consumer recognition, which is the recognition acquired in the course of time. Colours cannot by their very nature serve as an indicator of commercial origin and must be given a distinguishing character by long and constant use in the course of trade. The real question is, does the audience that is seeing the colour just automatically think of a specific brand without having to read the brand name/brand logo. This recognition is not built in a day, but is gained over time through consistent commercial activity, extensive advertising market presence and the goodwill created by the proprietor.
This principle is recognised in the proviso to Section 9(1) of the Trade Marks Act, 1999 where it allows for the registration of a mark that may not have been inherently distinctive at the time it was registered but has later acquired a distinctive character through use. That is, even if a colour is not capable of distinguishing the goods or services at the time it is used, it could become registrable if the applicant can show that the colour has acquired a meaning for consumers as a commercial source.
The doctrine of "secondary meaning" (or "acquired distinctiveness") focuses on the perceptions of consumers in evaluating trademark protection. The principle is acknowledged under proviso to section 9(1) of the Trademark Act, 1999 which allows for the registration of the trademark which may not be inherently distinctive but acquired a distinctive character through use. That is, even if at the time of adoption a colour is not able to identify goods or services, it can be registrable if the applicant can show that it has acquired that meaning in consumers' minds because of a particular commercial source. This doctrine of acquired distinctiveness is also known as secondary meaning, and centers on the consumer's perception of the trademark.
Academic discussion about consumer recognition also has been highlighted by the Welfare Theory of Intellectual Property by Professor William Fisher, which states that trademark lowers consumers' search costs by allowing them to be certain of the source of the goods or services, and induces businesses to ensure that the quality of their products is consistent and that the goodwill of their marks is maintained. In other words, from a colour trademark perspective, the colour cannot be the basis of the trademark; rather, the question is whether the use of the colour may become a reliable badge of origin that identifies the applicant's goods and/or services from those of the competitors.
Single and combination colour trademarks are unique.
Colour trademarks registration under Indian law is based largely on the distinctiveness of the colour mark with respect to the colour of the goods or services supplied by different parties. It is generally not considered that a single colour could be considered as a distinctive feature of a commercial origin, as consumers do not normally identify products from a particular commercial origin based on colour alone. A single colour is usually considered to be decoration or function, not an origin badge, as is the case with words, logos or labels. Therefore, a single colour trademark can only be registered under highly specific conditions, in which the applicant has proven the distinctiveness of the colour in the marketplace after long, continuous and exclusive use. This would be a colour which is so rare and so strange to the appropriate trade that consumers and traders would immediately recognize it as coming from a specific source of goods or services. If there is no acquired distinctiveness, an application may be rejected for not having distinctive character under Section 9(1) (a) of the Trade Marks Act, 1999.
Contrary to that, a combination of colours is better known in the context of the Indian trademark law and the definition of trademark in Section 2(1) (zb) explicitly includes a “combination of colours”. Two or more colours cannot necessarily be considered to give registrability, however. The Registrar considers whether the colour combination is sufficiently distinctive, and whether by use of the colour combination the consumer may be led to the commercial source of the goods. Colours which are used in normal product packaging or are part of a specific trade may not meet the requirements for protection. It follows that in order to obtain exclusive rights in a colour or colour combination the applicant has to provide convincing evidence of acquired distinctiveness in the mind of the relevant public. If the distinctiveness is only for the specific logo or geometric device, then protection may be available subject to a limitation as to colour under Section 10 of the Trade Marks Act, 1999.
The graphical representation
The graphical representation plays an important role in the registration of a colour trademark; it defines the exact field of protection that the applicant wants to have for his trademark. Colours can be many different shades or variations and when using a colour trademark for the first time, clarity and precision are especially critical, in comparison with the conventional trademark that is comprised of words or logos. The generic use of a colour may lead to confusion about the meaning of the trademark, which could also hinder other businesses or the public from knowing what the trademark owner has protected. Thus, the colour requested should be depicted in a way that is clear, precise and can define the specific content of the application. With respect to colour trademarks, the applicant must clearly depict the colour or combination of colours and offer a clear description of the way in which the colours are applied to the goods, packaging or services. International standards of colour identification can help to identify the exact colour requirement and prevent ambiguity.
The need for a graphical representation also provides a valuable public notice function. The exclusive rights claimed by the proprietor should be clearly stated in the Trade Marks Register, to ensure that other traders have an understanding of the scope and nature of the rights they cannot use. This has a special importance if the protection is given to a colour trademark when the colour is not a trademark and is not a broadly defined colour.
The Colour Must Be Non-Functional
Yet another condition for registering a colour trademark is its non-functional nature. A feature is basically considered to be functional if it is necessary for the use or purpose of the product or if it would impact its cost or quality. In the case of colour trademarks, protection should not be provided if the colour serves a practical or utilitarian function as opposed to a function of identifying the commercial origin of the goods or services. The idea of a trademark is to give the trademark owner the protection of the brand without giving the monopoly on features which competitors may legitimately need to compete in the business.
The concept of functionality can be understood generally in utilitarian and aesthetic functionality. A colour is utilitarian functional when its application helps the function of the product, its quality or effectiveness. Where giving exclusive rights over a pleasing color would make it difficult for other competitors, aesthetic functionality comes into play. The distinctiveness of the colour mark and the statutory conditions of their functionality are primarily considered in India under the Trade Marks Act, 1999. Therefore, a colour that is seeking trademark protection should serve a primary function of indicating the source of the goods rather than as a useful, necessary or competitively significant characteristic of the goods.
In compliance with the Basic Standards of Trademark.
Although a colour mark is a non-conventional trademark, it has to fulfill the basic prerequisites that are applicable in Indian trademark law for registration of any trademark. The protection of a specific colour is not automatic, the mere use of the colour does not guarantee protection to the person who owns it. The colour should be distinctive and it should be a sign that distinguishes the goods or services of an undertaking from the goods or services of other undertakings under the Trade Marks Act, 1999. It should also meet the general grounds of refusal set out under the Act. As a result the registrability of a colour is not solely based on its attractive and commercial aspects, but also on its ability to act as a "good indicator of origin" in the minds of the consumer, that is, to fulfill the essential function of a trademark.
Judicial Approach in India
Colours have received protection under the trademark law and the Indian judiciary has been pivotal in deciding the breadth of protection for colours. The first case, Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd. (2003), stemmed from Colgate's action for an injunction against Anchor for its use of a colours combination on a Toothpaste pack that was similar to the one used by Colgate. In resolving such conflicts, the Delhi High Court said that it had to keep in mind the net visual impression made in the minds of consumers. These must be taken into account in combination with colour combination, shape, packaging and overall product appearance. Protection can be afforded when there is enough similarity in overall appearance to raise questions as to the commercial source of the goods. This ruling acknowledged that a unique colour scheme can be crucial to the trade dress of a product and can be protected from a deceptive use of its colour scheme.
In Christian Louboutin SAS v Abubaker (2018), the Delhi High Court had to determine whether the red sole part of the shoe design of high heels is protected. The Court considered whether a colour alone could be considered a trademark under the Trade Marks Act of 1999. In this regard, the Court noted that the definition of “mark” in subsection (1) of the definition itself expressly mentioned a “combination of colours” without any reference to a single colour. The Court also reviewed Section 30(2)(a) which provides for certain “bona fide” uses of a mark. Based on this, the claims of infringement and passing off were denied. Such decisions are indicative of the conservative stance that the Indian courts take towards colour trademarks. The recognition of a single colour as a trademark is still held to a much more difficult standard, although distinctive colour combinations that are part of a total trade dress have been recognized as trademarks.
Prominent colour Trademark and their Legal Recognition
The significance of colour trademarks can be explained by the famous Cadbury purple and Christian Louboutin red sole. Cadbury has been utilizing this unique purple tint, known as Pantone 2685C, on its chocolate products for quite some time. The colour has been used extensively, advertised for an extended period and has been firmly established in the market and has become synonymous with Cadbury. It illustrates how a common colour can be used repeatedly over time, and become known to consumers, so that it eventually becomes more than just a component of the product packaging and instead serves as a signal for commercial origin.
Athletic shoes that are a more common example are Christian Louboutin's Red Sole, which is classified as Pantone 18-1663 TPX or “Chinese Red.” The claim does not relate to the colour red as such but to its use in the outsole of shoes which are high-heeled. The Red Sole has also been the subject of important trademark litigation in India, highlighting the legal complexities surrounding single-colour trademarks. Both examples indicate the legality of a colour comes down to consumer perception. Once a consumer starts to identify the colour as the trademark of a specific commercial source, the colour is capable of functioning as such.
Conclusion
Whether the colour can be used to establish a separate identity for the brand in the minds of consumers, is the key consideration for registration of a colour trademark in India. It is not sufficient to use a colour for a long time in order to achieve trademark protection. Consumers have to identify and relate the colour to a specific brand. The colour should also be clearly represented, non-functional and meet the essential requirements of the Trade Marks Act, 1999. Thus, a colour can only be registered as a trademark if it is used as an obvious indication of the commercial source of the goods or service.
Author: Aashirvad Tripathi, 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.
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