In the complex world of brand development and association, single colours have emerged as a powerful and sophisticated branding strategy. While most trademarks are associated with logos, names, or slogans, brands are increasingly choosing single colour marks to create a unique identity. One can easily recognize Tiffany and Co.’s blue, Cadbury’s purple, T-Mobile’s magenta, Mattel’s pink, etc, and these colours have become synonymous with the brands, such that consumers can easily recognize them without inscribing any traditional trademarks on them.
Obtaining a registration for a single colour mark can be legally challenging since a singular colour in itself does not pass muster as being inherently distinctive. Given the potential for monopoly and the limited range of solid colour pigments, courts have set a higher standard of proof for brands seeking to protect single colour marks. In order to secure protection over single colours, brands must demonstrate a strong association between the colour and their specific goods or services, ensuring that it is not widely used by competitors.
Legal Provisions and Perspective of the Trade Marks Registry
While the Trade Marks Act, 1999 (hereinafter referred to as “TM Act”), does not explicitly address single colour trademarks, they may be granted protection by providing a wider interpretation to the scope of Sections 2(1)(m) and 2(1)(zb) of the TM Act, the definitions of a mark and a trade mark. Single colour trademarks are also eligible for protection if they meet the criteria of being distinctive, non-functional and graphically representable.
The draft Manual of Trademarks issued by the Trade Marks Registry (“Registry”) (which is a guideline to bring uniformity and consistency in the administration and examination of trademark applications by the officers of the Registry), recognizes that marks consisting of a single colour may often be subject to objections under Section 9(1)(a) of the TM Act, as they inherently lack the capacity to distinguish one’s goods and services from other. Nevertheless, such trademarks may be eligible for registration if it can be established that the mark has acquired distinctiveness by way of substantial evidence.
In order to establish acquired distinctiveness, brands would have to show that the single colour does not serve a practical purpose (like indicating a product's flavour or quality) and is uniquely associated with the brand alone. This would require extensive evidence, which may include worldwide registrations, promotional and advertising materials featuring the colour mark in India, social media campaigns, public consumer surveys, unsolicited media coverage, etc.
In fact, the Registry has, over the years, granted registration to single colour marks that meet the stringent criterion related to non-functionality and acquired distinctiveness. Details of some of the registrations granted to single colour marks by the Registry are as follows:
International Perspective
While some jurisdictions, like the United States and Canada, have granted trademark protection to single colours, European courts have been more cautious. The US Supreme Court in Qualitex Co. v. Jacobson Products Co. recognized that a single colour can be recognized as a trademark under the broad language of the Lanham Act if it is distinctive, has acquired secondary meaning and is non-functional in nature.
However, European courts have been less favourable to recognizing rights over single colours, as they view colours per se as not being a means of identification in commercial practice. Moreover, they are concerned that granting exclusive rights to single colours could create an unjustified competitive advantage for a single trader. However, they have carved an exception if the colour is unusual or striking to those goods or services, not commonly used in the relevant industry, and if it does not serve a decorative or functional purpose.
In Societe des Produits Nestle v. Cadbury UK Limited, the UK High Court, while granting Cadbury partial registration for the colour purple, observed that while considering the registration of single colour marks, even if it has become distinctive, they must also satisfy the tests of being clear, precise, self-contained, easily accessible, intelligible, durable and objective.
Judicial Trends in India
Despite the progress on the prosecution front, enforcement of such colour marks against other members in the trade continues to be a bigger challenge. Indian courts have clarified and interpreted the principles surrounding single colour marks through various cases. However, the position remains unsettled and have resulted in conflicting judgements.
In one of the earliest instances, the Delhi High Court in Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd., in its obiter, observed that even a single colour has been recognized as a trade mark. It also recognized certain exceptions, where colours are functional or are common to the trade, for e.g., blue for ink and red for lipstick.
However, the Delhi High Court took a divergent stance in Cipla Limited v. M. K. Pharmaceuticals and rejected Cipla’s claim for exclusive rights over orange tablets sold in an oval shape. The Single Judge observed that there cannot be any monopoly over single colours in the pharmaceutical industry as medicines are not bought by consumers on the basis of colours. Instead, the court emphasized on the significance of names of the medicines rather than their colour or shape as distinguishing factors.
In Marico Limited v. Mukesh Kumar, Marico successfully protected its iconic packaging for ‘Parachute’ hair oil which consists of a blue (Pantone 285C) bottle with text on top. The court ruled that while Marico didn't claim exclusive rights over the colour itself, the combination of the colour and other packaging elements created a distinctive brand identity, and the use of the blue colour in the same shade by the defendant enhanced the likelihood of confusion between both the products.
Since 2017, Christian Louboutin has been actively protecting its rights in the red colour sole of its iconic high-heeled shoe. In December 2017, the Delhi High Court in Christian Louboutin SAS v. Pawan Kumar (hereinafter “Pawan Kumar”), recognized the distinctive character of the red sole and granted injunctive relief. Moreover, the court also observed that owing to extensive use, promotion and presence of the red sole in India, it had acquired a well-known character in India.
However, in a subsequent case in May 2018, another Single Judge of the Delhi High Court in Christian Louboutin SAS v. Abubaker & Ors., ruled that a single colour did not qualify as a trademark under the provisions of the TM Act. As per the court, the legislative intent of inserting the term “combination of colours” in Section 2(1)(m) of the TM Act, implied that a single colour cannot be a trademark. Therefore, as per the court, despite Christian Louboutin showing substantial use of the red sole, it cannot assert any rights over the single colour as it fails to fulfil the basic tenets of being recognized as a mark. Further, the court held that application of a single colour to goods serves a non-trademark function, as it acts as a feature of the product, and other manufacturers cannot be deprived of using them as a feature/characteristic or a functional aspect of their goods. The court also refused to rely on the decision in Pawan Kumar, since it had not analyzed the limitation of single colour marks by relying on the provisions of the TM Act.
Thereafter, in July 2018, just two months after the Abubaker decision, the Delhi High Court ruled in favour of Christian Louboutin in Christian Louboutin SAS v. Ashish Bansal, without referencing the jurisprudence on single-color trademarks as laid down in the Abubaker decision. Instead, the court recognized that Christian Louboutin had been successful in establishing the acquired distinctiveness of the red sole.
Finally, in April 2019, in an appeal, the Division Bench of the Delhi High Court in Christian Louboutin SAS v. Abubaker and Ors., overturned the decision of the Single Judge. As per the Division Bench, the Single Judge ought not to have determined whether the red sole is a functional feature or an arbitrary placement of colour to designate the origin of the product, on the first hearing of the suit, particularly when Christian Louboutin’s red sole had obtained
registration, and is prima facie valid under Section 31 of the TM Act. Accordingly, the suit was restored before the Single bench for the adjudication of the dispute.
Conclusion
Clearly, single colour trademarks have emerged as a valuable branding tool, and allows brands to stand out in the marketplace by creating a unique identity. In India, protecting a single colour requires brands to show that the colour has acquired distinctiveness, is non-functional and non-descriptive of the goods and services. The acquired distinctiveness is required to be accompanied with substantial evidence to show that the general public associates the colour with the brand alone. Thus, registration of a single colour as a trademark necessitates the presence of a “plus factor: or secondary meaning associated with that single colour in relation to the product or service.
A review of the judicial decisions in India reveals that even though brands have been granted registration for single colour marks, they often face difficulty in enforcing these trademarks against other manufacturers and users. Indian courts have often noted that since there are only a limited number of colours available, granting monopoly to single colours might lead to colour depletion, and stifle competition in the market. Therefore, even if a brand owner has granted registration in a single colour, courts may re-examine documentary evidence, while enforcing the colour marks, to ensure that both consumers and producers associate that particular colour shade with a specific brand owner.
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