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Single Colour Trademarks - A Prevailing Conundrum

03

AUG

2022

There was a strong need to compete in the business sector due to expanding industrialization. The use of branding and trademarks to distinguish their goods and services as definite, unique, and attractive came to fruition.

The trademark law in India provides expansive protection and covers unconventional marks such as shape marks, sound marks, image marks, a combination of colours, etc. However, when it comes to single colour marks, the law is far from colourful.

Over time, prominent businessmen and industrialists began to use these colours and their combinations; this makes it easier for clients to identify a certain source for the goods, which expands their market and prevents rivals from benefiting from this unique mark.

A suitable reference would be the bitten apple from the well-known technology firm Apple has prevented all others from using this mark as the company's sole property and not only its brand's recognition or the goodwill associated with it, allowing anybody who sees the product to identify the source of the product. This is the rationale why trademark are considered as right in rem rather than right in personam.

The Grey Area

What happens in the scenario if a mark, such as a pair of red-sole shoes or a purple chocolate wrapper has created a distinct identity in the customers’’ mind? These remind the customers distinctly of the renowned Louboutin shoes and the well-known Cadbury. In this scenario, the use of a single colour on the goods serves as a source-identification purpose. So should they be protected under the provisions of law and be granted Trademark? However, the ‘Colour Depletion Theory’ contends otherwise that protecting single colours will eventually result in the monopolization of all fundamental colours. Afterwards when any new entity that uses the colour in full good faith on its goods or services will be held accountable for infringement. The goal of the trademark law, which is to recognise distinctive marks, will be thwarted by this, which will have serious anti-competitive implications.

The single colour trademark is one such non-conventional mark that creates a grey area in trademark law because it is innately difficult for consumers to pinpoint the origin of products or services based solely on a single colour. It's far more difficult to assess whether a certain colour has genuinely become distinctive enough for customers to discern the product's origins from its colour.

Parallel to this, if a trademark is granted for a single colour, it is presumed to be opposed by other market players and subject to opposition under Section 9(1)(a) of the Trademarks Act,1999, as no one will give up the right to use that colour for the obvious reason that there are only so many colours available.

Permitting a merchant to use this colour solely would lead to unfair competition in the form of monopolistic power of usage in one trader's favour, and what if all single colours that exist are already protected by trademarks? Additionally, it will unleash Pandora's box of legal disputes. Therefore follows that a very high threshold of distinctiveness must be applied to such a mark if trademark protection for it is to be sought and that too in exceptional situations.

Regulating laws

The dilemma of registration of single colour marks was dealt with by the World Trade Organisation Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS) which widened the legal definition of a trademark to integrate "any sign...capable of distinguishing the relevant goods or services of one undertaking from those of other undertakings. The only benchmark for registrability of a colour being that it is "visually perceptible", "inherently capable of distinguishing the relevant goods or services" or "registrability which may depend upon distinctiveness acquired through use." The TRIPs agreement, which includes members of the World Trade Organization, has a clause similar to the one in Indian law regarding the scope of what is protected, but it also stipulates that a trademark applicant may obtain protection if he can exemplify that his mark has become distinctive through use.

The Trade Marks Act, 1999 as per Section 2(m) and 2(zb) allows a ‘device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof’ to be protected as trademarks. A barefaced conclusion that would result from a literal interpretation of the regulatory provisions is that a single colour cannot be used as a trademark. However, this may typically run counter to another basic aspect of trademark laws and holds that a mark should be legally protected when it serves as a source identifier for customers. Further, the Act under Section 10 also provides for a device represented by a particular colour or colour combination, the Registrar is given the discretion to impose as a condition of registration, the limitation of the mark to a particular colour or any combination of colours.

The way forward

As per the Manual of Trade Marks Law and Practice the position that a single colour 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.’ To avoid restricting trademark protection to "combinations of colours exclusively," the courts will first need to purposefully interpret the statute and second, thoroughly examine whether a single colour mark has become distinctive via consistent use.

For instance, Cadbury demonstrated how the colour purple used on its packaging has developed a unique personality. This claim was supported by a public survey, which was provided as evidence. However, the court of appeals eventually rejected Cadbury's bid to extend the use of its trademark to cover its other products.

It follows that there must be a "plus" component or secondary meaning to the colour when it is associated with the product for single colour trademarks to be registerable. The bar of proof has been kept high since single colour lacks the natural ability to be differentiated. However, there is no definitive standard to determine whether a colour has acquired distinctiveness; it all depends on how consumers interpret the colour and how well the court can capture it. Contradictory rulings will confuse applicants, forcing them to apply for a unique combination of colours rather than a single colour, while large corporations will take both the advantage and the risk of defending single colours in their favour. Therefore, to prevent conflicting decisions from the High Courts and to offer protection against anticompetitive acts, the Supreme Court or the Parliament should establish strict guidelines in support of this statement. If not, the Trade Marks Registry should issue rules or follow a uniform practice in registering single colours as trademarks.

Author: Shobhita Saran, a student of GGSIPU, Delhi, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

About the Firm

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Address E-13, UPSIDC, Site-IV, Behind-Grand Venice, Kasna Road, Greater Noida - 201310, UP, National Capital Region, India.
Tel 91-120-4296878, 91-120-4909201, 91-120-4516201
Fax 91-120-4516201
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Link www.khuranaandkhurana.com

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