Understanding Color Marks: Can they be protected?

Trademarks can be broadly classified into traditional and non-conventional marks. While the latter includes logos or symbols, non-conventional marks represent sound marks, smell marks, or color marks. For example, some sounds or jingles instantly remind us of a particular brand. Like the four-note sound (tin-tin-ti-tin) of Britannia is registered a sound mark. Likewise, there are many registered color marks that help us distinguish one enterprise from another and offer other trademark benefits as well.

Consumerism has led the market to become hyper-competitive. Brands try their best to carve their own niche. Consequently, the widening of the trademark spectrum and its subject matter became important. There is thus a long list of what is eligible for registering a trademark. In this article, we are going to explore color marks and if they can be registered as a trademark?

Trademark registration of color marks:

One of the ground rules for a trademark is that it should be distinct. This applies to color marks as well. However, when we speak of a single color, it lacks distinctiveness and thus it becomes very difficult for consumers to identify the source of goods or services just by a single color. However, Indian law has recognized the registration of single color marks in the Manual of Trademarks, Practice, and Procedure, 2015, wherein ‘it shall be protected on strict evidence of acquired distinctiveness.’ Hence, a very high standard of distinctiveness has to be attached to color marks if they are claimed for trademark protection.

Trademark benefits Understanding Color Marks

How can you establish distinctiveness of a single color as a trademark to enjoy its benefits?

In order to establish the distinctiveness of a single color, an applicant has to satisfy certain conditions to enjoy trademark benefits. Firstly, the color should be unique or unusual in the concerned business and there must be no connection between the product and the color. Next and most important, consumers should have recognized it as a symbol of origin for particular goods. For example Cadbury proved that the typical purple color on the wrappers of its chocolates has gained a distinctive character and public survey data stood as proof of this assertion. However, later when Cadbury tried to widen the scope of its trademark to apply it to other products, its competitors  strongly opposed it and eventually the Court rejected it.  Similarly, Ferrero Rocher’s chocolates with golden and brown wrappers are also distinct and people easily relate to them. 

Color marks and legal battles:

When it comes to color marks, the case study of Christian Louboutin is quite interesting. If you are a fashion enthusiast, you probably  know that Christian Louboutin is a French shoe designer whose shoes have a red sole. Here are a series of judgments that deal with the color mark of this brand. In 2017, Louboutin v Pawan Kumar case, the court declared the red sole as a well-known trademark. Louboutin was using the red sole mark since 1992 and its customers recognize this feature across the world.

The other side of the coin:

In 2018, in another case the court rejected reliance on Louboutin v Pawan Kumar verdict. It refused the trademark on the basis that Louboutin’s mark consists of just a single red color. The Court  invalidated it as per the definition of a mark under Section 2(1)(m) of the Trademarks Act, 1999. It asserted that for enjoying trademark benefits for a ‘color’, the mark has to be a ‘combination of colors’ .

The Court suggested that the use of the phrase ‘combination of colors’ in Section 2(1)(m) intends to not allow single-color trademarks. It stated that even if the red sole had acquired distinctiveness, it does not qualify as a valid trademark. So even if Louboutin is the owner of the trademark, it would be unfair to prohibit other entities from using the mark as per section 30(2)(a). However, in another case Louboutin v Ashish Bansal, the court said that a ‘specific tone of red’ in the sole of the shoe is unique. It thus recognized Louboutin’s red sole as a registered trademark in India. Even after so many judgments, the confusion seems to exist

The bottom line:

With regard to a non-conventional trademark, the courts ensure that the test of distinctiveness is stringent. Also, companies  generally do not  use single color mark for brand identification. It becomes difficult for consumers to guess the source of goods and services based only on the color of their packaging except in rare circumstances. Hence brands can use nice colors for packaging of product to influence or attract consumers but when it comes to protection, there are hurdles on the way.

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