Protection of Colour Trademarks

A trademark as defined under the Trade Marks Act, 1999 includes any word, name, symbol, configuration, device, shape of goods, packaging, combination of colours or any combination thereof that one trader adopts and uses to identify and distinguish his goods from those of others. For a mark to qualify as trademark it must satisfy three conditions:

1. It should be a mark as defined under Section 2(1)(m) of the Trade Marks Act, 1999.
2. It should be capable of graphical representation.
3. It should be capable of distinguishing the goods or services of one person from those of others.

Trademarks have been divided into two camps, i.e. conventional and unconventional. The former includes general word, device or symbols as marks whereas the latter includes marks in the form of smell, shape, sound or colour.

In this blog, we shall focus effectively on the concept of colour marks. We are all aware of the power of colour and the effect it holds on us. When you think of the colour purple on chocolate packaging you instinctively think of Cadbury. This is how powerful colour trademarks can be and hence in recent times they have attracted a lot of attention from the business circle, as it can be an exceptional tool for brand identification.

When can a colour become a trademark?

Colours are only registered as trademarks in exceptional cases and only when they have been used extensively and through that use have acquired a secondary meaning which makes them distinctive.

OHIM, now known as the EUIPO issued a practice note on proving acquired distinctiveness in March, 1999 which states that:

• The purpose of the evidence is to prove that the mark has become distinctive.
• The use must be of the mark applied for and not for any other similar variation of the colour.
• The use must relate to the goods and services applied for.
• At the date of filing an application for a colour mark, evidence must be collected and filed accordingly and the applicant should not wait until an inevitable objection is raised.

Further, the European Court of Justice (ECJ) in Libertal v. Benelux Mereknbureau that a mere sample of a colour on a piece of paper is not enough to grant registration. A written description of the colour may suffice but it depends on the circumstances and the description. Moreover, a colour must be designed using an internationally recognized identification code. Some of the universally recognized colour codes are:

1. Pantone Matching System (PMS)
2. Cyan, Magenta, Yellow, Black (CMYK)
3. Red, Green, Blue (RGB)
4. Hexadecimal Colour (HEX)

A combination of the sample of a colour with the written description will be most preferred provided the application meets the general criteria, i.e. it is clear, precise, self-contained, easily accessible, intelligible and objective.

Successfully registered colour marks

In Dap Products Inc. v. Colour Tile Mfg., Inc, involved the use of the colour red for cans of tile mastic for which registration was granted. In another similar case, registration was granted for an “ugly shade of greenish gold” for dry cleaning pads. In re – Owens Corning Fiberglass Corp., Owens Corning was issued a trademark for the colour pink that was used to colour its fiberglass batting insulation product. The colour was a non-functional aspect of the product as a fiberglass usually is either tan or yellow. The company had spent years emphasizing the colour pink of its insulation for decades. For the same purpose, it had also licensed the famous character Pink Panther for its ads on insulation products and spent over $50 million.

The combination of colours is accepted as a trademark in many jurisdictions as it is easier to prove distinctiveness. In Smith Kline and French Laboratories Ltd. v. Sterling Winthrop Group, the applicant was allowed to register ten different colour combinations as a trademark for its sustained release drugs sold in pellet form within capsules.