PROTETION ON COLOUR TRADEMARKS IN INDIA:

STRENGHTENING THE THEORY OF DILUTION OF

TRADEMARKS?

(In furtherance of fulfilment of Continuous Assessment-2 in the subject of

Intellectual Property Rights Law)

NATIONAL LAW UNIVERSITY, JODHPUR

WINTER SEMESTER (JANUARY-MAY, 2020)

SUBMITTED BY:

SUBMITTED TO:

HARSH DHIRAJ SINGH M S.

KANIKA DHINGRA
B.B.A.; L.L.B (HONS.) (A SSISTANT
PROFESSOR)
SECTION A
1503

TABLE OF CONTENTS

INTRODUCTION................................................................................................3

DISCERNING UNCONVENTIONAL TRADEMARKS...................................3

THE ‘RED AND WHITE’ FLAG TO COLOUR TRADEMARKS-

COLGATE V. ANCHOR..................................................................................3

CADBURY’S PURPLE WAR..........................................................................4

BATTLE FOR YELLOW AND GREEN- DEERE & CO. & ANR VS. MR.

MALKIT SINGH..............................................................................................4

SINGLE COLOUR TRADEMARK- CHRISTIAN LOUBOUTIN V ABU

BAKER..............................................................................................................5

COLOUR TRADEMARKS: LEADING TO TRADEMARK DILUTION?.......6

DYNAMIC NATURE OF ‘COLOUR’...............................................................7

THE ISSUE OF FREE COMPETITION..........................................................7

CONCLUSION.....................................................................................................9

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 INTRODUCTION

The definition of the word “mark” and “trademark” as laid down in the Act provides for
“combination of colours” or “any combination thereof”. 1 Colour is generally indistinct under
Trademark Law, but a mixture of colours with sufficiently acquired significance can be
differentiated and can be licensed as a trademark. A combination of colours may be
considered recognizable for trademark security purposes only when it can be shown that the
colour combination is so closely associated with a product or brand that the product or brand
can only be identified by the specific colour combination. The proof can be in the form of, for
example, public polls showing the combination of colours with the product or brand of the
applicant. Despite adequate supporting evidence it can be difficult to acquire defense in this
way. The burden lies on the claimant to show that the particular combination of colours has
acquired distinctive character in the course of trade or has acquired secondary significance
due to continuous bona fide use

DISCERNING UNCONVENTIONAL TRADEMARKS

A non-conventional or non-traditional trademark is a trademark used by an organization in

the context of trade which may not be easily perceivable and distinguishable in itself. In the
case of colour markings, i.e. when a colour per se is to be reported, the issue is that it is
subjective, as the way a common man distinguishes two similar colour shades varies with
different individuals.

1
Section 2 (zb), The Trademark Act, 1999.

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 THE ‘RED AND WHITE’ FLAG TO COLOUR TRADEMARKS- COLGATE V.
ANCHOR
In Colgate Palmolive v. Anchor Health & Beauty Care Pvt. Ltd.2, Colgate sought interim
injunction against the use of a commercial dress and a colour combination of one-third red
and two-thirds white, in that order, on its product container viz. Tooth Powder as the colour
combination of "red and white" Anchor was "passing off" by adopting the similar trade-dress.
The Court held that it was the overall impression that the consumer obtained from the visual
impression of colour combination, container form, labelling etc. as to the source and origin of
the products. If the article's first look, without going into the minute details of the colour
combination, getup or layout appearing on the container and packaging, gives the impression
that these ingredients are deceptive or close to similar, it is a matter of confusion and amounts
to the transfer of one's own goods as those of the other with a view to encroaching on
goodwill and reputation. The Indian judiciary accepted colour as part of the trade clothing
and provided protection in the present case by requiring Anchor to use the red and white
colour combination.

CADBURY’S PURPLE WAR

In Cadbury UK Limited V. Comptroller General Of Patents Designs And Trademarks &
Société Des Produits Nestlé S.A.3 (Cadbury case), Cadbury proved to have a distinctive
purple shade (Pantone 2865C) on the wrappers for its milk chocolate packaging. The UK-
based chocolate company – acquired by the food business Kraft in 2010 – applied for the
trademark in October 2004, registering its right to use the colour purple (Pantone 2685c). But
its rival Nestle argued that colours could not be practically trademarked for commercial
advantage. Rejecting Nestlé’s appeal, Judge Colin Birss said in the high court in London:
“The evidence clearly supports a finding that purple is distinctive of Cadbury for milk
chocolate.” The result is that, after Libertel Groep v Benelux Merkenbureau, single colour is
registerable as trademark in EU, provided it can be represented in accordance with the
conditions laid down by the ECJ in Ralf Sieckmann v. German Patent Office. By allowing
registration of Cadbury’s purple colour, the High Court has made it clear that in UK, single
colours can be given the protection of a trade mark. However, Cadbury’s application for
registration of its purple colour with the Trade mark Registry was rejected in India. The main
reason not to allow single colours to be licensed in India but only the combination of colours
is the fear of colours to be depleted.
2
2003 (27) PTC 478 Del
3
Case No: A3/2016/3082.

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 BATTLE FOR YELLOW AND GREEN- DEERE & CO. & ANR VS. MR. MALKIT
SINGH4
John Deere filed charges against Malkit Singh & Ors. As they were producing, distributing,
exporting and advertising infringing goods under the MALKIT label, using the same yellow
and green colour. Delhi High Court expounded that John Deere was entitled to
exclusive use of their trademark comprising of the colour combination yellow and green. The
Court held that the combination of green and yellow colours of the Plaintiffs has been used
over the agricultural products and even the tractors for 100 years (green colour for the body
and yellow colour for the seat and the wheels / rims), therefore the mark / combination is
reputable, distinctive and stands as an instant source-identifier for the agricultural products of
the Plaintiffs.

SINGLE COLOUR TRADEMARK- CHRISTIAN LOUBOUTIN V ABU BAKER 5

The Plaintiff, Christian Louboutin SAS claimed exclusive ownership of their registered
trademark ' RED SOLE, ' which was in fact not a wordmark but a red shade applied to the
shoes of women's footwear produced by them. The Plaintiff pleaded that Defendants are
using red colour in the soles of their ladies’ footwear, thereby, infringing the registered
trademark of the Plaintiff and passing off their goods as that of the Plaintiff’s. In this regard,
the Court observed that it is clear from a combined reading of Section 2(m) and Section 2(zb)
of the Act that the legislature's intention was to allow a mark with a "combination of colours"
as a trademark and a single colour, the status of a trademark cannot be provided. The Single
Judge also distinguished two earlier decisions delivered by co-ordinate Benches of the same
Court, in Deere & Company & Anr. v. Mr. Malkit Singh & Ors. The Court held that the
above judgments did not address the issue of using single colour as a label in accordance with
the provisions of the Act and also did not consider the underlying clause of Section 30(2)(a)
of the Act to be binding. Ultimately, it was held that there was no possibility of any deceit
and misunderstanding as the Defendants sold their products under the wording label '
VERONICA ' which was completely different from the wording label ' CHRISTIAN
LOUBOUTIN ' of the Plaintiff.

In a similar dispute involving the same Plaintiff in European Union, the Court of Justice of
the European Union on June 12, 2018 held that the “RED SOLE” is a position mark and
4
CS (COMM) No. 738/2018
5
CS (COMM) No.890/2018.

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consequently, a valid trademark under the laws of European Union. This was contrary to the
previous opinion provided by the Advocate General in Court of Justice of the European
Union on February 06, 2018, wherein he had expressed doubts as to whether use of colour
red can perform the essential function of a trademark (identifying its proprietor), when that
colour is used out of context, i.e., separately from the shape of a sole. The Advocate General
in his earlier opinion was of the view that the trademark at issue has to be equated with one
consisting of the shape of the goods and seeking protection for a colour in relation to that
shape, rather than one consisting of a colour per se and hence not a valid trademark in the
European Union. He had also opined that it has to be assessed as to whether the registration
of trademark would not run counter to the general interest in not duly restricting the
availability of the characteristics represented by that trademark for other operators offering
for sale goods or services of the same type.

-COLOUR TRADEMARKS: LEADING TO TRADEMARK DILUTION?

Dilution theory discards the view that the sole function of trademark is source identification,
as archaic.6 The function of trademark today is not only symbolic but also creative in nature.
Trademark is not merely the owner's commercial signature, but is "a silent salesman" through
which direct contact between the owner of the mark and the consumer is obtained and
maintained. Trademark dilution usually occurs either by way of blurring or tarnishing.
Tarnishment happens when a third party uses the mark to besmirch or debase the mark
holder.7 Thus, dilution theory envisages injury to trademark even in circumstances when
there is no confusion and even when the marks involved are non-competing.

Colour trademarks have been a reality for more than 15 years. They are recognised by
international organisations and most jurisdictions. The same legislative provisions are
applicable to traditional and non-traditional trademarks, including colours.8 Still, there are
significant differences between word or figurative marks and colour marks that make it more
difficult to obtain protection for a colour, especially for a colour per se. It is settled law that
colour is able to fulfil the essential function of a trade mark by uniquely identifying the
commercial origin of goods or services. But along with this, it possesses a number of
6
F. Schechter, "Rational Basis of Trademark Protection" 40 Harvard L Rev 813 (1927).
7
3. Michael Blackeney, "Well-Known Marks" 16 EIPR 481 at 484 (1994).
8
OHIM, Statistics of Community Trade Marks on 03/04/2012, SSC009, at [p. 47]. Available at:
http://oami.europa.eu/ows/rw/resource/documents/OHIM/statistics/ssc009-
statistics_of_community_trade_marks_2012.pdf Last visited on 15 February, 2020.

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“inherent qualities”9. A colour per se trade mark is in a certain sense unique and very
dynamic, as it can be applied in a variety of different ways. Charlotte Schulze suggests that
that are able to contradict the goal and purpose of trade mark law. This fact creates a constant
conflict between the desire for a liberalised system and the need for a restrictive approach to
registration of colour marks. Unlike many other marks such as word marks, picture marks, or
even sound marks, smells or shapes, abstract colour marks can appear in a potentially
unlimited array of forms and shapes.10 The Following sections will deliberate on the issues
surrounding colour trademarks.

DYNAMIC NATURE OF ‘COLOUR’

This changeable nature of a colour mark brings uncertainty as to whether such a dynamic
sign can perform the function of a trade mark and appropriately identify the goods or services
as originating from a particular undertaking, as is required by law. 11 In this regard, even more
potential problems can be caused by new types of colour marks, such as abstract colour
marks whose contours and shades may be constantly changing. Evidence suggests that in
many cases coloured parts of a building or packaging are perceived by the public as a
“decoration not as an indication of origin”. Modern technologies allow for creation of such
“mixed” colours, and the only obstacle to their registration would be the legal requirements
for registrability.12

Evidence suggests that in many cases coloured parts of a building or packaging are perceived
by the public as a “decoration not as an indication of origin”. Modern technologies allow for
creation of such “mixed” colours, and the only obstacle to their registration would be the
legal requirements for registrability. And the debatable and confusing application of colour
marks often becomes a starting point in seeing colour as being too broad for becoming a valid
trade mark.

THE ISSUE OF FREE COMPETITION

There are no doubts that colour trademarks can be registered and enforced, provided that they
satisfy certain legal requirements. However, free competition is a fundamental principle and
“driving force” of the functioning of the internal market. It is afforded such a high level of
protection within the system of Community law that it can even be called “artificial”. If

9
Supra Note 6.
10
C. Schulze, “Registering colour trade marks in the European Union” (2003) E.I.P.R. 2003, 25(2), 55-67, 57.
11
M.C. Caldarola, “Questions relating to abstract colour trademarks: recent developments in Germany”, E.I.P.R.
(European Intellectual Property Review) 2003, 25(6), 248-255, 248.
12
Id.

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intellectual property rights threaten or restrict competition, the rules protecting competition
will come into play. Moreover, trade mark law is not applied by the courts in a vacuum.
Instead, market and business considerations, including those of competition, play a
significant role in judicial decisions. 13

It is often argued that due to the special nature of a colour not restricted by a certain shape or
logotype on it, exclusive rights of the owner of this colour may be extended too far. For this
reason, the threshold for acquiring distinctiveness for colour marks is higher in comparison
with traditional trademarks. In fact, issues of competition have even been known to preclude
colours from being recognised as trade marks at all. One reason why colour per se cannot be
a trade mark in Canada is that “because it could be seen as a monopoly of the colour in a
particular industry”.14 Trademark law does not preclude competitors from producing the same
goods or providing the same services as another trader; it just requires not selling them under
the same mark. However, when this mark is a colour, the situation may not be so
straightforward.

The emphasis in arguments that colour trademarks violate competition is placed mainly on
the nature and the abilities of colour and can be summarised as follows:

i. Use of colour is inevitable in trade. All traders use colour for their logotypes,
packaging, advertising material, and containers. Rights conferred by a registered
colour mark to one brand owner (who is usually the biggest and most well known in
the industry) could interfere with rights of other traders to use this particular colour in
their advertising or on packaging.
ii. Colour is not only inevitable; it may be advantageous and helpful. Sunila Sreepada
argues that “colour not only attracts attention, but also plays a role in whether
consumers choose to purchase the item”. Colour is capable of affecting consumers’
minds, creating associations, and making people like a particular good more than
others. People can even unconsciously choose to buy the item because they liked its
colour or the colour of its packaging. It is sometimes argued that there can be a lack of
desirable colours within a particular industry, and if all attractive colours were
registered, new traders would find themselves in a disadvantageous position, as they
would have to choose a less attractive colour for their business.

13
1 V. Liakatou; S. Maniatis “Red soles, gas bottles and ethereal market places: competition, context and trade
mark law”, E.I.P.R. 2012, 34(1), 1-3, 1.
14
Supra Note 8.

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 iii. it should not be forgotten that one of the most important qualities of colour is the one
for which it can obtain protection as a trade mark, namely, the ability to individualise
the goods or services of a particular undertaking.251 According to marketing
research, colour can increase brand recognition up to 80 percent and make a good or
service stand out.

The issue of trade mark protection versus competition in the market is further complicated by
the argument of limited availability of colours, or as it is called in the U.S., colour depletion
theory. The argument is based on the idea that the number of colours is limited and
monopolisation can lead to lack of available colours for traders in the same field, particularly
newcomers.15 Moreover, it is suggested that although a significant number of colours, their
shades and combinations can potentially be used by traders, the ability of the average
consumer to distinguish between them, remember and associate with a particular brand, is
restricted. Limited registrability of colour trademarks is directly related to competition issues
that arise in most cases concerning registration or enforcement of colour marks.

CONCLUSION

After analysis of the stated issues, it becomes apparent that at the moment registration and
effective protection of a colour mark, especially a colour per se, is not an easy task that
sometimes can even be “virtually impossible” to perform. Although colour marks are treated
by law in the same way as traditional marks, their proprietors have more obstacles to
overcome. Not many colour mark registrations are applied for, even less have succeeded and
are able to survive opposition.

First of all, traders must be careful during the application procedure and ensure that the mark
complies with detailed and numerous representation requirements. The main hurdles,
however, are related to the “universal criterion” of trade mark registration, namely distinctive
character, as well as to the issue of free competition. The requirement of proving inherent or
acquired distinctive character seems to demand much more effort and resources from
prospective owners of colour marks, if efforts are compared with those needed to register a
traditional mark. It is evident from the court decisions analysed that only companies who
made significant investments in promotion of a colour mark as a brand identifier were able to
15
S. Anderman, A. Ezrachi (eds), Intellectual Property and Competition Law: New Frontiers, New York, OUP,
2011, p. 4.

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achieve the necessary level of recognition among the relevant public. As only top level
companies have succeeded in obtaining exclusive rights over a colour, such a mark remains a
luxury.

When allowing non-conventional trademarks such as combination of colours as trademarks,

the courts ensure that the test of distinctiveness is very strict. It is therefore, clear that for
registrability of combination of colours as trademarks there needs to be a 'plus' factor or a
secondary meaning to the colour when it is attached to the product. However, there is no
exhaustive test as to whether the combination of colours have acquired distinctiveness and it
all depends upon how the customers perceive the combination of colours and how the court is
able to capture it.

Notwithstanding all the difficulties surrounding registration of colour marks, well-known

brands continue to attempt to acquire protection and fight for enforcement of their existing
colour marks. As the number of brands owing or wishing to own a colour continues to grow,
an adequate and consistent legal response becomes ever more urgent. Unfortunately, it can be
asserted that while all the legal rules were set a long time ago, court practice on the matter
still lacks consistency.

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