DECODING COLOURFUL TRADEMARKS
A boon to Brand Identity
Introduction:
Colour is an important factor in brand identity. All the popular Brands have colourful Trade Marks. In fact Brands without colours are unthinkable. Colours form a prominent part of a Brand itself and the Trade Marks owned by it.
Consumers vary from those who are well informed, to those who are illiterate and average consumers with imperfect knowledge. Applying the test of average consumer with imperfect recollection, it seems that the consumer identifies the trade origin of a product or brand name by its attractive and colourful trademarks. The red colour of coke, Blue colour of Pepsi, again red & white colour of Kit Kat, golden colour of 5- STAR are some of the popular examples wherein we are reminded of the colourful packages and marks.
When consumers think of a product or service, it’s the colour forming part of the mark that comes to the mind instantly. For instance in South India, the name board of the famous Madurai Muniyandi Vilas is in Red and White. Predominantly the local consumers being ignorant of goods and services of different trade origin identify or source the goods or service providers through the colour or combination of colours used in the trademark. Therefore the colour of a trademark becomes the brand identity and in due course of time becomes synonymous with the mark.
There are so many issues surrounding the registration and ownership of colourful Marks[1] and colour marks[2] and the question under what circumstances they are likely to be protected are to be examined further.
Section 2(m) of the Trademark Act 1999, defines a mark as a device / brand / heading / label / ticket / name / signature / word / letter / numeral / shape of goods / packaging or combination of colours or any combination thereof.
The Definition of mark includes Combination of colours. Whether combination of colours includes a single colour depends upon the facts and circumstances of each case.
Colours convey lot of meanings that is why all brands have colourful logos and devices and other colourful combinations as their Trademarks. Human brain tends to register colours faster than numerals or letters. They play a vital role in attracting customers.
COLOURFUL TRADEMARKS:-
Many brand owners always wonder whether they should register a trade mark in black & white or colourful (combination of colours)?
If a trademark is registered in black & white it is deemed to be registered for all colours[3] while registration of a mark in specific colours will be protected only for those colours[4]. Does that mean that it is wiser to register a mark in Black & white to obtain a blanket protection for use of all colour combinations?
If registration is obtained for a Black & White trade mark, the rights are for that mark as filed i.e. in Black & White. If registration is in a specific colour combination, then the rights in the said mark will be for those colours. However, according to Section 29[5] infringements rights extend to similar marks/deceptive and misleading marks. Therefore protection may extent to other colour combinations. This really depends on the mark, the goods or services and facts and circumstances of each case.
COLOUR TRADEMARK:-
The second type of colourful marks is the pure colour marks. Pure colour marks are also considered to be non –Conventional Marks.
Examples of pure colour marks are
CADBURYS - PURPLE [panatone-2685C]
ORANGE TELECOM,UK – ORANGE[panatone-151]
Below are the basic concepts that govern the ownership of pure colour marks.
A. THE THEORY OF COLOUR DEPLETION:-
In most circumstances colour depletion seems to be a strong argument against registration of pure marks. According to the Colour depletion theory, there are a limited number of colours. Therefore if colours are registered as Trade Marks, the colours that remain available to other brand-owners become restricted. In India the trade mark acts includes only combination of colours. However Colour Depletion theory further argues that it only bars the registration of the seven basic colours. Shades of those colours are very much available for use, if they can be represented by an international system of colours Such as panatone, Fluctone, RAL, ect.
Though different shades are available for use, there is enough scope for confusion between two shades of the same colour. Here arises a question how the courts will determine the similarity and deceptiveness of such infringing marks?
Moreover, since more colours are to be registered as Trade Marks, the number will continue to deplete.
In Campbell Soup Co. v Armour & Co.[6], the plaintiff tried to protect its famous red and white labelling used on their food products. It was held that the plaintiff’s were wrong in requesting the right to have exclusive use of the coloured sign. The exclusive use of a sign leads to monopolisation, and permitting the use of the colour mark in that case would in turn allow other manufacturers to monopolise other colours, until the list of available colours becomes depleted.
Subsequently in Qualitex[7] the above precedent was rejected by the US Supreme Court. The court held that a limited supply of colour in some industries did not justify a ‘blanket protection’, as in most cases, enough colours are available for use.
B.FUNCTIONALITY OF THE MARKS
Ambrit Food Company Vs Kraft Foods[8]
The plaintiff a frozen food company sold their product in a royal blue packaging. They wanted to restrict the Defendant which is also a food Company from using the same colour for their products. The US court held that royal blue served a functional purpose when used to package frozen desserts and therefore could not be monopolized as a trademark.
The ruling stated that
"Royal blue is a 'cool color;' it is suggestive of coldness and used by a multitude of ice cream and frozen dessert producers."
Although the court acknowledged the issue of protecting the consumer from confusion, preventing a monopoly of a functional colour was a greater issue.
Life Savers v. Curtiss Candy Co.[9]
The Plaintiff a popular candy company, sued the Defendant for using a multi-coloured striped background on the wrapper for its multi-flavoured hard candies similar to the wrapper used by the Plaintiff. The US court denied protection to the plaintiff, citing that no trademark infringement or unfair competition had been established.
The court held that it was a
"general practice of the trade" for hard candy manufacturers to sell their candy in packages with multi-colored backgrounds for their assorted flavoured discs, and labels with single colored background for their packages containing one flavour of candy discs."
They concluded that the multi-colored background was in fact descriptive and served as a ready identification of the flavour of the candy in the package. Further such packaging and using multiple colours for Candies is common to the trade. The following are few examples of colours serve a functional purpose and common to the trade.
1. Green for organic products
2. Orange for pharma industry
C.WHEN MARK BECOMES SYNONYMOUS WITH A BRAND
Usually the court protects those colour marks which have become synonymous with the brand due to continuous use. The mark becomes so distinctive that the consumer associates the particular colour only with that brand.
DAP Products, Inc. v. Color Tile Mfg., Inc[10].,
Dap(Plaintiff) a building supply company, sued the Defendant Color Tile Mfg. Inc., When they started selling their ceramic mastic in a red bucket, similar to that of the Plaintiff which also sold its mastic in a red bucket. A federal district court in US ruled in favour of the plaintiff and granted protection to their red packaging. The court held that "Secondary Meaning" was attached to the red plastic bucket.
The court reasoned that
a) The color red was not a functional feature of the tile product.
b) Red had nothing to do with the color of the adhesive, the ceramic tile industry, or the product’s performance.
c) Dap used the color solely as a unique color for brand identity.
Similarly in the case of Owens Corning[11], the US Court recognised that the Pink colour used by it for its home insulation fibre glass has gained a secondary meaning and fibre glass is not naturally pink. The color pink has ended up being a product identifier for Owens Corning.
In Cadbury Ltd. v. ITC Ltd[12].,
The Gujarat High Court in the above matter held that the purple and gold wrapper on the eclairs has come to be associated with Dairy Milk Eclairs and using an identical or deceptively similar label by the Defendant for its product Candyman’s choco eclairs would be passing off the Defendant's products as that of the Plaintiff's. In this case the entire argument was based on the purple and gold colour combination.
Société des Produits Nestlé S.A. Vs. Cadbury UK Limited[13]
This is the most popular and recent successful story where Cadbury won litigation against Nestle for a particular shade of purple (Pantone 2685C).
Christian Louboutin S.A. Vs. Yves Saint Laurent AM Holding, Inc.
The 2nd US Circuit Court of Appeals in New York ruled that the red soles were a
"Distinctive symbol that qualifies for trademark protection". The Court found that Louboutin failed to demonstrate that the secondary meaning of their red sole mark had also extended to monochromatic shoes and soles. Since Yves Saint Laurent’s shoe and sole design was monochromatic it was not infringing of Louboutin’s contrasting red sole trademark. Therefore Saint Laurent monochromatic red shoes do not infringe any trademark rights of Louboutin.
This is a unique case wherein it dint make much difference in the situation both parties where in prior to this litigation. Sometimes it may not be all that easy to own even a particular shade of colour as propounded in Colour Depletion theory.
In Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd.
The Court held that since the colour combination of red and white on its container and packaging of its tooth powder is used by the Plaintiff since 1951. The Court was of the opinion that use of similar colour combination by the Defendant is likely to cause confusion in the minds of the customers especially those who are unwary, illiterate and gullible. The Court further held that infringement of Colgate's distinctive colour scheme would also cause dilution of the brand apart from confusion and must be restrained.
From the above analysis it is understood that the courts in India as well as courts abroad recognise the significance of a pure colour mark. Despite the above fact the court will protect only in cases where the mark has acquired a secondary meaning or has become distinctive in relation to a particular brand due to continuous usage.
Registration alone does not guarantee the ownership of a pure colour mark, since color marks are never inherently distinctive and must acquire secondary meaning to claim valid trademark protection.
Despite the above state of the pure colour marks, which may or may not be favourable to the Brand & Trademark owners, Colours have always been and have become an integral part of a Brand’s identity. It occupies a major role in Brand Strategy. Irrespective of the state of flux in their protection, Colourful marks do perform their desired function effectively.
[1] Colourful Mark - The said term is coined by the author D.Gowthami Reddy. Colourful Mark, unlike a pure colour Mark consists of others elements such as a logo, device or a Ticket along with combination of colours. Usually it is a composite Mark. Example: SURF EXCEL, HORLICKS and POPPINS.
[2] Colour trademark: - A colour trademark is a non-conventional trademark where at least one colour is used to perform the trademark function of uniquely identifying the commercial origin of products or services. EXAMPLE: CADBURY, VODAFONE. http://en.wikipedia.org/wiki/Colour_trademark.
[3] Section 10(2) of The Trade Marks Act, 1999
[4] Section 10(1) of The Trade Marks Act, 1999
[5] Section 29 of The Trade Marks Act, 1999
[6] Campbell Soup Co. v Armour & Co. 175 F2d 795 (1945)
[7] 115S.Ct. 1300(1995) Qualitex Co. V Jacobson Products co.,
[8] 805 F.2d 974 Dec. 10, 1986, United States Court of Appeals, Eleventh Circuit.
[9] 182 F.2d 4 May 23, 1950. United States Court of Appeals, Seventh Circuit.
[10] 821 F. Supp. 488, 492 (S.D. Ohio 1993)
[11] 774 F.2d 1116. Oct. 8, 1985. United States Court of Appeals, Federal Circuit.
[13] [2012] EWHC 2637 (Ch), England and Wales High Court (Chancery Division)
