COLOUR MARK - AN UNCONVENTIONAL TRADEMARK

Introduction:

A trademark according to Section 2(1)(zb) of Trademark Act,1999 means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours ". Any mark, beit a heading, numerals, word, device, letter, etc. is also known as a conventional trademark. If able to distinguish commodity or services of one individual from that of another then it can be registered as a trademark.

However, there are marks, such as colour, scent, shape and sound that are not mentioned in The Trademark Act, 1999. But they can nonetheless be safeguarded and provided trademark status. Such marks are called Unconventional trademark.

Concept:

The category of unconventional trademarks is all new they are not same as conventional trademarks which are also known as traditional trademarks. Colour marks, sound marks, smell marks, or shape marks fall in the category of unconventional trademarks. These marks should help the buyer to differentiate the good and services of a company to that of another. A colour mark can only be registered under the trademark act if it meets all the criteria that are given in the act.

Regulation and Governance:

In the United States, the Lanham Act of 1946 governs the trademarks. The Lanham Act includes the unconventional trademarks by not specifically excluding them.For a mark to get registered under the act, graphical representation is not necessary. Hence, it is fairly easy to register an unconventional mark in the United States in comparison to other countries.

To put it easily, any mark that has a non-graphic characteristic and would only require a comprehensive verbal description for it to be registered can be classified as an unconventional trademark. Therefore, the colour mark or any other non-conventional mark which can be distinguished and is unique, can be registered under the Lanham Act of 1946.

Doctrine of functionality considered essential to the registration of the trademark.That means, if a product's characteristic is assumed to be functional then it cannot be approved as a trademark, i.e. if it is essential to the purpose of the product, use of the product or if it affects the quality or the cost of the product. So the Doctrine of Functionality prohibits the use of the feature as a trademark.

Indian Perspective:

In India, The Trademark Rule was enacted in 2017; it led to the new era for registration of non-conventional marks. Now, the colour mark could be obtained by submitting a reproduction of that colour combination.

The applicant needs to provide proof that the colour that they want to register as a trademark has acquired distinctiveness. If the colour mark is not inherently distinctive which is mostly the case in the colour trademark system then the company required to show that their colour mark has attained distinctiveness due to its usage over a long duration of time to get it registered.

The applicant also needs to provide evidence in his/her application, which shows that the colour or combination of colour is exclusively connected with their commodity and the people relate that colour or combination of colour with their goods, and all the burden of proof is on the applicant. For example, Purple as a trademark for a wine may be distinctive but when the colour purple is claimed for packaging of those bottles would be non-distinctive.

Precedent and Principles Laid:

The well-known Cadbury case, Cadbury Uk Limited V. The Comptroller General of the Patent Design and Trademarks& Société Des Produits Nestlé S.A (Case No: A3/2016/3082), Cadbury confirmed that it is a unique shade of purple (Pantone 286 5C)  on the wrappers of the chocolate had achieved distinctive nature. A survey from the public was submitted as proof to this statement and the same was approved on 1st October of the year 2012 after the long legal battle with Nestlé Company.

Some of the examples of successful registration in the United States for the colour trademark include -

1.   Brown colour was registered for motor vehicle transportation and delivery of personal property by UPS

2.   Combination of the colour green and yellow registered for forestry machines by John Deere

3.   Colour canary yellow registered for stationary notes by 3M.

4.   Colour robin’s-egg blue registered for goods such as boxes, bags, and catalogue covers registered by Tiffany’s

In the case of Cipla Limited v. M.K Pharmaceutical in 2007, the Delhi High Court denied the trademark protection to a blister packaging containing distinctive orange coloured,oval-shaped medicines. On the other hand, a Blue colour Parachute oil bottle was granted protection. Some of the other successful colour trademark registrations are Telekon AG for its magenta colour label, Victronix AG for its Brown colour label. But in 2018, Delhi High Court did not grant the trademark to Christian Loub out in for its red shoe sole, it comes in the top 5 luxury brands among women fashion and we'll recognized brand among the upper-class society. The court declared that red shoe sole does not come under the definition of 'mark' as given in the Act and it is not even the trademark to which protection could be given.

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