Article: Is a Single Colour Mark Registrable?

Author: Hardik Choudhary

Introduction

Colour marks fall in the non-conventional category of trademarks and are capable of being granted protection in India. Within colour marks, the registrability of a combination of colour marks is well-settled and relatively easy. However, when it comes to the protection of single colour marks, the position is rather unclear. This article aims to shed light on this conundrum.

Relevant provisions

The Trade Marks Act, 1999 (‘the Act’), does not define colour marks per se but they find their mention in the definitions of a trademark and a mark. Section 2(1)(zb) of the Act defines a trade mark as “…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 shape of goods, their packaging and combination of colours…” Further, section 2(1)(m) of the Act states that a “…mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof…”.

From a plain reading of these provisions, though it appears that protection can only be granted to a combination of colours and that a single colour mark is incapable of registration, the issue is far complex. The definitions provided above are inclusive in nature rather than exhaustive.

This is also supported by the draft Manual of Trade Marks (‘draft Manual’), which states that “…A single colour may be registerable as a trade mark if it is very unusual and peculiar in a trade and is recognized by traders and consumers alike that it serves as a badge of origin for that class of goods.” The draft Manual states a single colour mark can be eligible for protection if it can show acquired distinctiveness. It provides that “Wherever the exclusive right to color is sought, weighty evidence should be necessary to overcome objection under Section 9(1)(a) of the Act.” It further states that “…If a particular colour of packaging has become distinctive in fact as indicating the goods of a particular trader, there is no reason why it should not be protected by registration.” 

Judicial trends on the issue

The question of registrability of a single colour mark has arisen before the Courts in India for some time now. However, the position remains unsettled, given a set of conflicting judgements on the issue.

One of the earliest instances was in the case of Colgate Palmolive Company v. Anchor Health And Beauty Care Pvt. Ltd. [2003 (27) PTC 478 Del] before the High Court of Delhi. In the case, while acknowledging the significance of trade dress and colour combination, a Single Judge Bench (J.D. Kapoor, J.) held that “…Even a single colour has been held to be a trade mark. There may be exception also. Exception is that where the colour cannot be protected as the blue colour is for the Ink and red colour is for the lipstick. Red and white has nothing to do with the pink. Teeth as white line and Gum as Pink colour alone at least sometimes can meet the basic requirements as a trade mark.” Thus, the Court took the view that a single colour mark can be a trademark and is protectable.

A contrary view was taken in Cipla Limited v. M. K. Pharmaceuticals [2008 (36) PTC 166 Del] by the High Court of Delhi. A Single Judge Bench (Shiv Narayan Dhingra, J.) while denying protection to a blister packaging containing a distinctive orange coloured tablet, held that “…It is settled law that there can be no monopoly over colours…Merely because plaintiff has started using a particular colour for its tablets plaintiff does not get monopoly over colour so that no one else can use that colour. The medicines are not bought by colours by the customers.” 

In a notable decision of the High Court of Delhi in Christian Louboutin Sas v. Mr Pawan Kumar & Ors. [2018 (73) PTC 403 (Del)], a Single Judge Bench (Mukta Gupta J.) held that Christian Louboutin’s “…’RED SOLE’ trademarks have acquired a well-known character…”. The issue again came up before the High Court of Delhi in Christian Louboutin Sas v. Abubaker & Ors. [2018 (74) PTC 301 (Del)]. In the instant case, the plaintiff had filed a suit alleging infringement and passing off of its registered RED SOLE trademark. A Single Judge Bench (Valmiki J. Mehta, J.) relying on the above-mentioned definitions under sections 2(1)(zb) and 2(1)(m), held that “…Combination of colours is sine qua non, and meaning thereby that quite obviously one single colour, as contra-distinguished from combination of colours, cannot be a mark falling in the definition of mark. Hence, a single colour not being a mark, the single colour cannot be claimed as a trademark.” The Court in the instant case held that the registration awarded to the RED SOLE mark itself was invalid and hence, no relief could be granted. 

This judgement has, however, been set aside by the Division bench (S. Muralidhar And I.S. Mehta, JJ.) of the High Court of Delhi in Christian Louboutin Sas v. Abubaker & Ors. [2019 (78) PTC 262 (Del)]. The Single Judge Bench judgment was set aside on procedural grounds and the Court did not make any comments on the merits. However, in light of the Single Bench Judgement being set aside, the issue of registration of single colour marks is again open for debate.

Conclusion

From the above discussion, it is clear that the issue of registration of a single colour mark is far from settled. Protection of a single colour mark is evolving and relies heavily on evidence and discretion of the Courts/Examiner. The draft Manual acknowledges issues and provides that there must be evidence that consumers recognise the colour and use it as a trademark for specific goods and services. The debate on protection of single colour mark as trademark needs to be further examined and deliberated on by a larger bench of the High Courts or the Supreme Court of India.

References –

[1] Draft Manual Ch III, at 3.2.4, available at

 <http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf>, last accessed on January 2, 2021

[2] Colgate Palmolive Company v. Anchor Health And Beauty Care Pvt. Ltd. [2003 (27) PTC 478 Del].

[3] Cipla Limited v. M. K. Pharmaceuticals [2008 (36) PTC 166 Del].

[4] Christian Louboutin Sas v. Mr Pawan Kumar & Ors. [2018 (73) PTC 403 (Del)].

[5] Christian Louboutin Sas v. Abubaker & Ors. [2018 (74) PTC 301 (Del)].

[6] Christian Louboutin Sas v. Abubaker & Ors. [2019 (78) PTC 262 (Del)].

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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