Dr.

RAM MANOHAR LOHIYA

NATIONAL LAW UNIVERSITY, LUCKNOW

Subject – Intellectual Property Rights-I

FINAL DRAFT

“Law Relating to Color Marks-A Comparative Analysis”

SUBMITTED BY-
Digvijay Singh
VIIth Semester
Roll No-160101064, Section-A

SUBMITTED TO-
Dr. Vikas Bhati
Assistant Professor (Law)
Dr. RMLNLU, LUCKNOW

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 ACKNOWLEDGEMENT

This project venture has been made possible due to the generous co-operation of various persons.

I, Digvijay Singh student of B.A L.LLB (Hons.), VIIth Semester would like to express my

sincere thanks and deep gratitude to Dr. Vikas Bhati (Assistant Professor), without whose

thorough and insightful guidance this project work would not have been a success.

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INRODUCTION

As Trade Mark owners increasingly turn to Non-Traditional Marks as a way to increase brand
awareness and to find innovative ways to market their products, governments around the world
are faced with the challenge of how to reform their national laws to include protection for non-
traditional marks, such as color trademarks. Color can communicate information, such as yellow
of a taxicab or red of traffic signs.  It should be no wonder, then, that color is often used to
communicate the origin of goods and services—that is, used in trademarks and service marks.
Not only is color often an important element of a trademark, color itself can be accorded full
trademark protection provided certain requirements are met as set forth in the Supreme Court’s
1995 Qualitex1 decision. Particularly, the color mark must have acquired distinctiveness and
cannot be a functional element of the goods or services.

Color as a trademark

Section 102 of the Act states that a trademark can be limited to a particular color or combinations
of colors. However, such limitation as to color will only be allowed on determining the
distinctive character of the mark. However, if no color has been specifically claimed, then it shall
be deemed to be registered for all colors.

Distinctiveness of the color mark

If the mark being applied for is for a combination of colors and that is the distinctive feature of
the mark, then this should be expressly mentioned at the time of filing. However, in cases of
when a particular color is claimed, there applicant will be required to submit evidence to show
that the said color combination or color that has been claimed is solely associated with the
Applicant or exclusively designates their goods.

Given this requirement, it is advisable to file such marks claiming usage from a particular date in
order to be able to substantiate that the color or combination of colors is in fact associated with
the Applicant. However, if the color that is claimed is common to trade then it might be difficult
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514 U.S. 159 (1995)
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THE TRADEMARK ACT 1999

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to claim exclusivity over the color. An interesting example (provided by the Trademark Office) –
GREEN as the trademark for a beer may be distinctive, however when the color green is claimed
for packaging of beer bottles, it would be non-distinctive.

Qualitex Co. v. Jacobson Prods. Co

Facing a clear split among the federal appellate courts’ treatment of whether color alone can act
as a trademark, the Supreme Court of the United States heard Qualitex Co. v. Jacobson Prods.
Co3. Before Qualitex, the Circuits had been split regarding whether color alone could be
accorded protection. The high court settled the issue, unanimously holding that “there is no rule
absolutely barring the use of color alone.”

Qualitex involved a unique shade of green-gold that Qualitex Co. had been using on dry cleaning
pads since the 1950s. After competitor Jacobson began selling competing products using that
shade of green-gold, Qualitex sued for trademark infringement, having registered the color for
press pads with the PTO.

Considering whether color was eligible for trademark protection, the Supreme Court focused on
the language of the Lanham Act. “Nothing . . . shall prevent the registration of a mark used by
the applicant which has become distinctive of the applicant’s goods in commerce.” 15 U.S.C. §
1052(f). The Court noted that “a mark,” defined as any “word, name, symbol or device” had
certainly come to include color.

The Supreme Court then established the requirements for according trademark protection to
color alone. As with any mark, a color mark must first and foremost be capable of identifying
and distinguishing goods from those manufactured or sold by others. It must be capable of
indicating the source of those goods, even if the source is unknown. 15 U.S.C. § 1127. 

The Court analogized color to the category of “descriptive marks,” which are never inherently
capable of indicating source. For such categories, there is an assumption that the term—or color
—was adopted for purposes other than to identify source.  The Court recognized, however, that
color, like descriptive marks, could come to identify, distinguish, and indicate the good’s source

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514 U.S. 159 (1995)

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through “secondary meaning.”  “Secondary meaning,” the Court explained, is acquired when, “in
the minds of the public, the primary significance of a product feature . . . is to identify the source
of the product rather than the product itself.” 4.

As a second requirement, the Court allowed protection of color marks only for those that—like
all trademarks—are not functional. “The functionality doctrine,” it explained, “prevents
trademark law from inhibiting legitimate competition by allowing a producer to control a useful
product feature.” The Supreme Court reasserted its established functionality standard, stating that
“a product feature is functional if it is essential to the use or purpose of the article or if it affects
the cost or quality of the article.” The Qualitex Court, noting that sometimes color is not essential
to a product’s use or purpose and does not affect cost or quality, found no universal “functional”
bar to color marks.

Definition under the law of different countries

The United States –

In the United States, color alone may serve as a trademark. The Supreme Court has determined
that U.S. trademark law permits the use and registration of a single color as a
trademark. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995). In the Qualitex
decision, the Court held that the greenish-gold color of dry cleaning press pads was protectable
as a trademark. This color met the requirements of a trademark by acting as a symbol, operating
as a source identifier and serving no other function aside from identifying the press pads’ source. 

The European Union –

Formal trademark protection for color marks was introduced in the EU by the First Council
Directive of December 21, 1988 (the Trademarks Directive). The purpose of the Trademarks
Directive was to harmonize European trademark law where possible. Prior to the Trademarks
Directive, protection for color marks varied by Member State.

Requirement from applicant

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1. If the applicant is claiming a combination of colors, as applied to the goods or their
packaging or as used in relation to their services, as a trade mark, they should claim this
by identifying the trade mark as a color trade mark on the application form. The exact
description of the color combination as per International Classification System of Colors
(to be verified) As well as supplying a graphical representation of the trade mark, the
applicant must also provide a concise and accurate description of the trade mark on the
application. The description, which should state precisely what the mark consists of and
how the description relates to the representation, will be entered as an endorsement of the
registration and will thereby help define the scope of the registration.
2. Application for the registration of the trade mark shall be submitted in triplicate with five
copies of additional representation. Representations of the trademark in additional
representation / application shall correspond exactly with one another. Additional
representation shall consists specification and classes of goods / services for which the
registration is sought, name and address of the applicant, name and address of the agent,
if any, the period of use, if any, and such other particulars required by registrar from time
to time. If an applied trademark is claimed as combination of color, it is required to
submit one reproduction of mark in black & white and rest four in colors. The
reproduction furnished shall consist of three different views, If registrar considers that the
reproduction is not able to show all features of three dimensional mark he may call upon
to furnish within two months up to five further different views and a description by words
of the marks, If registrar considers the furnished different views is not sufficiently show
the particulars of the trade marks, he may call up the specimen of the trade marks. If the
applied trade mark consists of shape of the goods of its packaging, the reproduction
furnished by the applicant shall consist of the five different views and a description by
words of the marks. If registrar considers the furnished different views is not sufficiently
show the particulars of the trade marks, he may call up the specimen of the goods or
packaging as the case may be.
3. If a trade mark is always used in particular colors, a different form of endorsement would
be required. This situation is most likely to occur when a trade mark which is lacking in
Capability to distinguish is shown through evidence of use to be capable of distinguishing

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 when used in particular colors. Acceptance for registration may be allowed on the basis
of a limitation to color.

Note: If an applicant chooses to limit to some colors, the same form of endorsement would be the
appropriate one.

Examination of evidence of use as a unconventional color trademark

In order to constitute a trade mark, a color or combination of colors must be capable of

distinguishing the goods or services of one trader from those of other traders. If a particular color
of packaging has become distinctive in fact as indicating the goods of a particular trader, there is
no reason why it should not be protected by registration. It is conceivable that extensive use of
two colors in many different arrangements may result in the color combination per se becoming
distinctive of the applicants' goods. However, if the colors are used not in a special or particular
pattern or arrangement, it is likely to be more difficult to prove that in such cases colour would
lend distinctiveness as a badge of origin.

Single Colors

A single color may be registerable as a trade mark if it is very unusual and peculiar in a trade and
is recognized by traders and consumers alike that it serves as a badge of origin for that class of
goods. As color per se is not normally used by traders as a means of brand identification, unlike
words or pictures, consumers are not in the habit of making assumptions about the origin of
goods and services based solely on their color or the color of their packaging. It follows therefore
that single colors will only in exceptional circumstances be capable of denoting the origin of a
product or service. Marks consisting of a single color will usually be liable to objection under
Section 9(1) (a) of the Act because they inherently lack the capacity to distinguish.

Combination of colors

The expression “trade mark” in section 2(1) (zb) is defined to include “combination of colors”.
A combination of colors may be registrable, but this will depend on its uniqueness and how they
are used. If the colors are presented as a figurative mark, then as few as two colors could be

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accepted; but if they are simply the colors of the packaging of the product they are less likely,
prima facie, to indicate trade source. When applications consist merely of colors applied to the
goods or their packaging it will be necessary to consider how unusual the color combination is in
relation to the goods and whether, prima facie, the combination is likely to strike the relevant
consumer as an indication of trade source.

It is, for example, unlikely that the average consumer of washing soaps would, without
extensive and exclusive use, view color combinations such as blue and white or yellow and white
as an indication of trade source. Wherever the exclusive right to color is sought, weighty
evidence should be necessary to overcome objection under Section 9(1)(a) of the Act.

It is for the applicants to demonstrate whether the way color is used forms an essential part of
the subject matter of their trade mark. For example, if evidence of acquired distinctiveness shows
that a specific color has come to be recognised as a trade mark when it is used in a particular
manner, as in the case of logo used by HP or Bharat Petroleum in their service centers , it may be
advisable to define the mark in this way and establish claim for registration of mark, i.e. logo or
particular geometrical device, limited to colors under section 10 of the Act. In such cases, the
rights in trademark lies in particular logo or geometrical device limited to be used in that color
those colors.

CONCLUSION

The registration of non-traditional trademarks is still at its infancy stage in India. Since the need
of trademarks is at its zenith in today's times, the scope of non-conventional trademarks is yet to
be tapped. Various aspects such as holograms, motion/gesture trademarks etc. need to be
streamlined in order to cope up with the current realities.

Qualitex established a legal framework for the assessment of color marks, requiring the same
basic requirements as for any mark; that the color mark be distinctive and non-functional.
Subsequent case law further developed this framework, giving structured analysis to “secondary
meaning” and “traditional” and “aesthetic” functionality. As we turn the corner into the second
decade of the twentieth century, however, color marks are taking on all new dimensions. Smack
Apparel has broadly defined color schemes coupled with any secondary indicia as protectable

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marks. In this uncertain legal environment the protection, registration, and enforcement of color
marks raise a number of important issues that need to be carefully evaluated.

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 BIBLIOGRAPHY

http://www.ipindia.nic.in/writereaddata/images/pdf/TMR_DraftManual_11March2015.pdf

http://www.mondaq.com/india/x/472602/Trademark/NonConventional+Trademarks+in+India

http://www.inta.org/INTABulletin/Pages/ColorMarks_in_US_EU_China_Japan_7012.aspx

http://nopr.niscair.res.in/bitstream/123456789/14082/1/JIPR%2017(3)%20246-250.pdf

http://www.chinaipmagazine.com/en/journal-show.asp?id=497

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