Daniyal Qureshi | Symbiosis Law School Pune | 8th July 2020
Abstract
This article analyses the capability of single colours to be used as trademarks by organizations. In India, the position of law regarding unconventional trademarks is relatively unclear due to lack of judicial pronouncements and few unconventional trademarks granted by the executive. However, at common law, the position of single colours and trademarks has been discussed at length by the judicial forum. In the United States of America, the law of intellectual property is highly advanced and high rates of proactive litigation for the enforcement of intellectual Property Rights are observed. There is a need for clarity in the law. This article makes a comparative study of such position of law at the jurisdiction of the United State of America, The United Kingdom and India.
Introduction
Development of Intellectual Property Law is always a tricky facet of law due to its highly technical nature and universal application it is difficult to task to draw boundaries, provide definitions and identification to property and its rights.
Colour marks are one of the unconventional marks which have found their way quite conveniently into law. However, the big question that remains is of single colour trademarks. The looming question that whether single colours have the quality to be qualified as trademarks and whether monopoly over a particular colour could be awarded to one person, if yes, to what extent?
Various jurisdictions have answered this question differently.
United States of America
The United States of America has answered the question of assigning trademark status to single colours in affirmative. The Lanham Act[1] defines a trademark as something which “includ[e] any word, name, symbol, or device, or any combination thereof.”[2] The definite authority which declares singular colours capable of being trademarked in the U.S. is Qualitex Co. Jacobson Products Inc[3] wherein the Supreme Court of the United States awarded the appellant sole rights to use a particular colour of green dye which the appellant had been using for a number of years in his business. The Supreme Court held that the language of the Lanham Act clearly provides that a colour may be singularly used as a trademark, however only when it has acquired a secondary characteristic. “secondary meaning” is acquired when “in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself “[4] The established view in the United States is that the colour mark does not distinguish the product itself, rather the source of the product, in essence giving rights to the producer of a product to a particular colour.
United Kingdom
The same question, however, was answered differently in the United Kingdom in the case of Cadbury UK Ltd. v. Comptroller General of Patents, Designs, Trademarks[5] In the year 1995 Cadbury acquired its patent over the use of its iconic purple colour for the wrappers of chocolate bars.[6] Ever since the acquisition of this particular trademark, Cadbury has had been trying to establish a monopoly as the sole owner and user of the shade Pantone 2685C subject of the trademark. Cadbury has been trying to assert that they obtained a monopoly over the shade for its universal usage. However, the Court of Appeals in 2018 answered this question in negative.[7] Cadbury was prevented from asserting complete monopoly. The Court held that the trademark held by Cadbury was singularly applicable to chocolate bar wrappers, as it was a singular trademark attached to a device (being the wrapper).
India
In India however, the position is quite unclear yet. The most curious judicial pronouncement has been in the case of Christian Louboutin SAS the French shoemaker which obtained a trademark for their iconic red-soled women’s designer shoes[8]. The company applied for a trademark under class 25 wherein they claimed sole proprietary rights for the Red Soled Designer Shoes for women and trademarked the shade Pantone no. 18.163TP. Initially, the trademark application was rejected for not being distinctive enough, however, they made the contention that they proprietary rights weren’t claimed for the universal usage of the colour, but in the limited use, as it is applied to the soles of the women’s designer shoes. Therefore, the singular colour was capable of being trademarked if a secondary factor such as the manner of its usage was explicitly attached to the trademark rights. This argument was accepted and subsequently, the company obtained its trademark in the year 2012. Subsequently in the year 2015, the Manual of Trade Marks, Practice and Procedure[9] was released by the Ministry of Commerce and Industries which discussed colour trademarks as a combination of colours (plural). The Manual suggests that single colour trademarks will usually be liable to be rejected under Section 9 of the Trademarks Act 1999[10]. In the year 2018, the company went on a spree of litigation protecting its’ trademark rights[11] The Delhi High Court granted its’ trademark the status of the well-known mark at first, however in the subsequent case of Christian Louboutin SAS v. Abubaker and Ors[12], Learned Single Judge at the Delhi High Court rejected the validity of the trademark on the grounds of the trademark being a singular colour and not valid under Trademarks Act 1999. However, on appeal, this decision was reversed. The appellant argued:
that “a „device‟ by definition is a feature or a thing which appears on a product and serves the purpose of source identification.” While the above claims have to be tested further by a Court on the basis of the pleadings and evidence, it perhaps explains why the Plaintiff has sought and obtained registration for „RED SOLE as a device mark. The specific case of the Plaintiff is that the said trademark was a “device trademark” consisting of a combination of a colour red and the placement of the said colour at a specific position on the outsole of a shoe and that it would be wrong to assume that it consists only of an individual single colour.[13]
However, it must be noted that the appeal was reversed on the grounds of violation of the Civil Code of Procedure 1908 and the doctrine of stare decisis and the Division Bench consisting of two judges expressly noted that the judgement was not passed on merits.
Conclusion
Whereas it is clear that to some extent single colours can be trademarked, the sheer difficulty has been noted even by the executive in the Manual of Trademarks. It can be observed that at common law jurisdictions singular colours cannot independently be trademarked. No entity can be given proprietary rights for the universal usage of a particular colour. A ‘plus’ point aspect or a secondary feature expressing the manner of usage of the colour seems evident. There being no ruling by the Supreme Court of India, the issue remains unclear.
[1] The Trademark Act 1946
[2] 15 U.S.C. § 1127
[3] 514 US 159 (1995)
[4] (Supra)
[5] [2016] EWHC 796 (Ch)
[6] Trademark number 2020876A (UK National Registration)
[7] See [2018] EWCA Civ 2715
[8] Trademark Number 1922048 (National/IRDI)
[9] Available at https://www.jetro.go.jp/ext_images/world/asia/in/ip/pdf/manual_of_trade_marks_201503_en.pdf
[10] Manual of Trade Marks, Practice and Procedure 2015, Section 12.2.5, p57
[11] Christian Louboutin SAS v. Ashish Bansal and Ors, Del HC CS(COMM) 503/2016, Christian Louboutin SAS vs. Pawan Kumar and Ors. (12.12.2017 – DELHC) 2018(73)PTC403(Del), Christian Louboutin SAS vs. Abubaker and Ors. (25.05.2018 – DELHC)
[12] RFA (OS)(COMM) 13/2018 & CM 29064/2018
[13] (Supra)
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