All marketing techniques are aimed to capture the attention of the consumer and make an impact. A distinctive trademark with a catchy tag line and colour scheme is probably more likely to stay on the minds of the consumer. A number of marketing experts believe that colour is the most important elements of branding and rightly so, because a number of brands can be recognized solely on the basis of the colour. Christian Louboutin shoes with the red sole and Cadbury with its purple packaging are the best examples I can think of. Since the brand itself is recognized by the colour, can such colour be protected as the trademark to ensure that no one else in the market uses the same colour scheme? The answer is yes*.

John Deere is an international brand known for its agricultural equipment especially Tractors, Harvesters and Combines in a unique green and yellow colour combination. The Delhi High Court recently passed an order in favour of the plaintiff John Deere and granted temporary injunction against the defendant who was using the green and yellow combination for tractors. The plaintiffs contended that they have acquired distinctiveness for the said colour combination and that it has been used by them since 1918. Further, they also contended that they have registrations for the green and yellow colour combinations in India.

Definition of ‘mark’

Though there aren’t many judicial precedents on the point of trademark protection for a colour or combination of colours, the position of law is clear in terms of what the law permits in this regard. The definition of a mark under the Trademark Act includes ‘combination of colours’ and therefore it can be construed that colours can be protected in relation to goods and services under the Trademark Act.

Colour as a trademark

Section 10 of the Act states that a trademark can be limited to a particular colour or combinations of colours. However, such limitation as to colour will only be allowed on determining the distinctive character of the mark. However, if no colour has been specifically claimed, then it shall be deemed to be registered for all colours.

Distinctiveness of the colour mark

If the mark being applied for is for a combination of colours and that is the distinctive feature of the mark, then this should be expressly mentioned at the time of filing. However, in cases of when a particular colour is claimed, there applicant will be required to submit evidence to show that the said colour combination or colour that has been claimed is solely associated with the Applicant or exclusively designates their goods.

Given this requirement, it is advisable to file such marks claiming usage from a particular date in order to be able to substantiate that the colour or combination of colours is in fact associated with the Applicant. However, if the colour that is claimed is common to trade then it might be difficult to claim exclusivity over the colour. An interesting example (provided by the Trademark Office) – GREEN as the trademark for a beer may be distinctive, however when the colour green is claimed for packaging of beer bottles, it would be non-distinctive.

Thoughts

The Delhi High Court recognised the plaintiff’s right to the green and yellow colour combination solely for the reason that they could prove that they had acquired distinctiveness and more importantly that the said colour combination is solely associated with the plaintiffs. So if a product or the packaging is of a specific colour (example: canary yellow for post-it or the purple for Cadbury) and is recognized by the colour itself, then it is best to apply for registration claiming a specific colour. However, if the product or packaging is likely to change from time to time, then it may be a better option to apply for a trademark without claiming exclusivity to one particular colour.

This article has been authored by Nikita, an IP Law practitioner.