Non-Conventional Single Colour Mark - Agnitio Legalis And Impedimenta

Author: LawSphereX

Category: General Law

Published: 2026-08-23T20:40:47.138837+00:00

Updated: 2026-08-26T17:10:18.53+00:00

NON-CONVENTIONAL SINGLE COLOUR MARK: AGNITIO

LEGALIS AND IMPEDIMENTA

Varshini S, SASTRA Deemed University Kavimayil N V, SASTRA Deemed University

ABSTRACT

Colour is one of the significant things to be observed by the efforts. And hence it is more cautious about utilising this initial impression at the time of creating a business identity. Marks is that utilise at least one element to get a distinct and unique identity. Concerning production services are referred to as colour marks, and such marks are likely to be registered as single colour mark or combination of colours. And this paper mainly focuses on the recognition of single colour marks, which emerged as a more significant issue in the intellectual property law. This paper focuses on discrimination faced by single colour marks in India. The Indian Trade Mark Act of 1999 focuses only on the combination of colours and no single colour legal recognition especially under section 2(1)(m), section 2(1) (zb) and section

10 was given. The reason is due to lack of inherent distinctiveness, lack of

common definition for colour. Beside all those cons still single colour marks requires recognition legally and proper procedure as it enhances brand identity, is potential for international harmonization which involves the TRIPS agreement, and consumer protection. Beyond India, other countries like the United Kingdom, United States of America and European Union accepted the single colour trade mark and some gave legal recognition too. Keywords: Trade mark, Recognition, Single colour mark, Legal validity, Distinctiveness, Functionality, and Cross – border jurisdiction.

Prelude: Trademarks being one of the vital elements of Intellectual property it protects distinct products and services in the markets. In the contemporary world the increase in technology, globalisation and consumer freedom of choice and satisfaction focus of the reputed firms gave rise to the need for protection of their own marks or signs which they invented or created using their skill or knowledge. The process of protection was first as traditional as with the conventional trademarks (word, logo, symbol, etc. ,) and then gradually extended to non-conventional marks (sounds, smell, colours, shapes, etc. ,). Focusing on the underrated concept of non-conventional mark many countries felt that it to be regulated, and they did so to make the firms to be protected and did it in the sense of welfare of the society.

Among these non-conventional marks colour, especially single colour mark represents a complex classification where it requires competent commercial identifiers who should be capable of recognising the brand with the single colour and maintenance of consumer loyalty also necessitated in it. But it also had drawback that when it gets recognised it created monopolisation. This tension of nonconclusive debate whether to recognise single colour continued and resulted in testing the balance between innovation, competition, firm identity and consumer protection. Several countries laid standards for regulating single colour marks especially United States, European Union, and United Kingdom. United States recognised it in the most famous. landmark judgment, Qualitex Co. v.

Jacobson Products Co1 suggesting a tests, consisting of two important ingredients such as distinctiveness and the non-functionality to get the single colour mark protected under trademarks. With respect to European Union, the Courts of Justice recognised the registration of single colour mark if it has clear and precise representation in the case Libertel Groep BV v. Benelux Trademark Office2. United Kingdom also in the notable case Société des Produits Nestlé SA v. Cadbury UK Ltd3, highlighted the precision and clarity of colour mark application. Though the recognition gives protection, it still requires stringent regulation to prevent monopolisation. Contrarily, the Indian Trade Marks Act, 1999 recognised combination of colours within definition of ‘mark’ but didn’t extend the scope of mark to single colour mark.

This statutory silence creates a regulatory lacuna as absence of recognising single colour mark in the

1 Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995)

2 Libertel Groep BV v Benelux-Merkenbureau (Case C-104/01) [2003] ECR I-379

3 Société des Produits Nestlé SA v. Cadbury UK Ltd [2013] EWCA Civ 1174

commercial identification is vulnerable to disputes and infringement issues. This lack of protection to firms creates lots of judicial protection of right of organisation or company issues. This dilemmatic situation asks for a close examination whether the Indian trademark law should develop to adjust a single-color mark, and if yes, under what circumstances. While comparative scholarship in the US, UK and the European Union provide valuable outline, limited academic engagement exists on how these models can be adapted in Indian context. In addition, the existing body of literature in India focuses on non-traditional trademarks, without separating the unique challenges created by single colours. The current study tries to fill this difference by analysing the standard, theory and practical implications of regulatory clarity for single - coloured mark in India.

1. Statement of Research Problem:

The absence of explicit statutory recognition and regulatory standards for single-colour marks under the Indian Trade Marks Act, 1999 creates ambiguity in their protection, leading to inconsistent judicial interpretation and potential monopolisation concerns. This raises the critical question of whether and how India should develop a balanced legal framework for recognising single-colour trademarks that safeguards both brand distinctiveness and public interest.

2. Research Questions:

i. Whether the absence of express recognition of single-colour marks under the Trade Marks Act, 1999 creates a legal lacuna that hinders the protection of non-conventional trademarks in India? ii. Whether single-colour marks can be brought within the ambit of Section 2(1)(m) and Section 2(1)(zb) of the Trade Marks Act, 1999, which define “mark” and “trade mark,” through judicial interpretation or legislative amendment? iii. Whether the prohibitions under Section 9(1)(a) and (b) of the Trade Marks Act, 1999 relating to lack of distinctiveness and descriptiveness prevent the registration of single-colour marks unless acquired distinctiveness is established? iv. Whether the defence under Section 30(2)(a) of the Trade Marks Act, 1999, permitting

descriptive use, limits the enforceability of rights in single-colour trademarks and thus prevents monopolisation of colours? v. Whether the standards of distinctiveness and non-functionality, as recognised in Qualitex Co. v. Jacobson Products Co. (U.S.) and Libertel Groep BV v. Benelux Trademark Office (EU), can be adopted or adapted within the Indian legal framework to guide recognition of single-colour marks?

3. Research Methodology:

The study adopts a doctrinal research methodology, relying on a detailed analysis of statutory provisions, judicial decisions, and scholarly writings relating to trademark law. It involves a comparative examination of international frameworks governing single-colour marks in the U.S., U.K., and E.U. alongside the Indian legal regime. The research is analytical and interpretative in nature, aiming to derive legal principles and propose reforms for recognising and regulating single-colour marks in India.

4. Research Objective:

The primary objective of this research is to examine the legal position and recognition of singlecolour marks under the Trade Marks Act, 1999, by analysing the scope of Sections 2(1)(m), 2(1)(zb), 9(1), and 30(2)(a) in determining their registrability and limitations. It seeks to evaluate international standards and judicial precedents from jurisdictions such as the United States, United Kingdom, and European Union, particularly focusing on the applicability of distinctiveness and non-functionality tests within the Indian context. Further, the study aims to assess the challenges posed by potential monopolisation and its impact on fair competition and consumer welfare, ultimately proposing a balanced legal framework that ensures adequate protection of single-colour marks while upholding the broader public interest.

5. Single Colour Mark – Meaning and its hallmarks:

A single colour mark is a trademark which does not accompany any design or words, but consist

completely of one colour which is applied to their packaging of goods or products. Commonly in Indian law only the combination of colour as a trademark is given high protection and the recognition of single colour as a trademark remains silent. Generally for the recognition of single colour as a trademark it should have distinctiveness, secondary meaning and it should

explain what are the challenges that face during registration. Some of the significant examples of recognition of single colour as trademark are,

1. TIFFANY & CO – tiffany blue colour – is considered as colour trademark which is used on

its promotional materials and packaging. It has a legal protection under the Lanham act of United States. Colour trademark can be registered after fulfilling two conditions; a) secondary meaning; b) non– functionality.

2. Purple – cadbury -it is a chocolate brand it evokes a number of brand attributes like, quality

and tradition.

3. Pink – mattel [barbie] – this is recognised for single colour trademark and it can be found on

packaging, toys. And thus it is recognised as a separate brand. The features of single colour trademark: a) consumer recognition and distinctiveness, for a recognition of single colour as trademark the, decorative aspect is alone not sufficient, it must acquire distinctiveness, which means a consumer should easily find out the product with the help of the colour resembles in that particular product. b) unusual and peculiar mark, in the relevant business field, the colour chosen must be strikingly different or unusual. c) goodwill and prior use, the colours are not naturally distinctive, and the applicants have the burden to prove, that the public links link the colour with their particular brand by using it for long term and advertising. d) non- functional requirement, for the recognition of single colour as trademark it should not perform any functional aspects.

e) strict scrutiny by trademark registry, the colours are limited in resources, it should be carefully examined by the authorities for application of single colour as trademark. f) exceptional circumstances, recognition of single colour as trademark are granted only in rare and exceptional cases. It should comply with all the three major conditions.

COMPARISON BETWEEN SINGLE AND COMBINATION OF COLOUR

ASPECTS

SINGLE COLOUR

COMBINATION OF COLOUR

Narrow in scope and protects only Broader in scope and protects a specific colour combination or arrangement of Scope colours. distinctiveness It is inherently not distinctive, but It is inherently distinctive because it needs secondary meaning creates a unique visual identity Risk High risk of monopolising a colour This does not apply functionality and the functionality doctrine doctrine and low risk of applies monopolising colour Legal It has a very high legal challenges Here the legal challenges are few challenges and needs extensive evidence Example Tiffany blue colour and Louboutin Pepsi red and blue colour, Colgate red sole red and white stripes Practical Creates a strong brand identity but It is easier to enforce. implication hard to enforce legally

6. Advantages of recognising single colour marks in India:

The increasing important issue in the trademark jurisprudence is for the recognition of single colour as a trademark in India. The Indian trademark act of 1999 under section 2[1][m], recognizes only the combination of colours and single colour. Hence the recognition of single colour under the Indian jurisprudence remains silent. And only under certain exceptional cases they recognise single colour if they acquire distinctiveness through secondary meaning. This led to legal uncertainty among the business which depended on colour trade mark. But apart from India , the single colour as a trade mark has been accepted internationally and court agreed that the idea of using colour has a trade mark is valid, if it acquires a distinctiveness from the others and this has globally seen in the case of QUALITEX CO. vs JACOBOSON PRODUCTS CO.

[1995] - the Supreme court of United States has stated that a single colour can be recognised and used as a trademark if it acquires distinctiveness and does not perform any

functional purpose. Another similar case LIBERTEL GROEP BV vs. BENELUX - MERKENBUREAU [2003] - the European court of justice [ECJ], stated that a single colour as a trademark can be recognised if it represented graphically with proper clarity like pantone codes and had a distinctiveness.

6.1 Alignment with global harmonisation

To facilitate cross- broader trade, enforcement and investment in a globalised marketplace, harmonisation of intellectual property standards is essential. Countries like United States and European Union recognise single colour as a trademark which helps them to build a strategic advantage in consistent international identities. For instance, the Qualitex and Libertel case has been referred as a great example of single colour as a trademark. But India did not recognise single colour as a trademark by not compelling with the secondary meaning, which lead the Indian brands remain disadvantage in the foreign market. This non - recognition lead to face the difficulties in the business competition.

If it recognises single colour mark then it will meet with TRIPS agreement obligation and global jurisprudence, which will pay way for the multinational business and the standard of Indian economy will rise and also the Indian company can have international protections.

6.2 Prevention of misuse and passing off

The filing of passing off case or arguing that the overall packaging of trade dress has been copied is due to a company’s colour mark trade has been infringed by the other. This does not provide any advantage because it cost more money and takes long time and which results in uncertainty because the Indian courts recognise only the combination of colour and no single colour as a trademark. In the case of ITC vs. BRITANNIA INDUSTRIES LTD [2016], the issue was that Britannia had copied the yellow + blue packaging colour of ITC’s yippee noodles. They claimed that this will lead to confusion between the customers in the identification of the products. As per the act only the combination of colour is allowed. If India recognizes single colour trademark, then the ITC may use only the yellow shade with distinctiveness in their business and thus also does not lead to any infringement.

Thus, the Delhi High court concluded that colour plays a important role for the identification of products to the consumers. Similar case, SHREE NATH HERITAGE LIQUOR vs. ALLIED BLENDERS PVT. LTD& DISTILLERS PVT. LTD - in this case the dispute is about the liquor bottle design and its colour, where they claimed. Here both companies were using same packaging colour

for the products, which will lead to confusion between the consumers. So, the court held that only combination of colour is allowed which led to conflicts, if single colour had been recognised then anyone of the company would have been proceeded with single colour and the other with different colour. Hence it can be said that if single colour has been recognised in India, then the companies will register their own colours and would not wait until a case-bycase conflicts gets over. And hence colour can be regarded as a legally protected brand asset.

6.3 Stronger brand identity and protection

Recognition of single colour in India would give businesses a strong tool to defend and build their brand identity. Colours are considered as psychological trigger and not just as a decorative thing. In India colour is treated as public property and companies relying on recognition of single colour face uncertainty because they lack to acquire distinctiveness. COLGATE PALMOLIVE vs. ANCHOR HEALTH & BEAUTY CARE [2003] - in this case both use similar red + white combination of colour to their products, which lead to confusion and conflict, and held that anchor product does not get colour recognition, if single colour has been accepted statutory protection will be provided rather than relying on passing - off claims.

6.4 Consumer benefit and reduced confusion

In a crowded marketplace while choosing products a quick decision has to be made for that in the consumer’s perspective, colour always serves as a reliable and immediate identifier of products. If single colour has been recognised then it will protect the consumer from confusion and deception. According to the marketing study 90% of the product identification are based on colour. For instance, let us take the coca cola’s red colour and Pepsi’s blue colour, where the recognition for single colour has been approved, so it makes clear that the consumer can without reading the name of the product can even blindly differentiate the product and use it. However, the recognition of single colour has been still explicit, there will be better protection to the consumer.

However, in India itself the local manufacturer uses same colour packaging and same design as Cadbury, which will lead to confusion between the consumer. By recognising single colour, there will be protection of consumer trust and buyers get the product that is authenticated to their brand of choice.

6.5 Encouragement for Indian companies

By recognising single colour trademark in India, it would encourage startups and small

enterprises, because India is a vast in the competitive business and small companies would always face difficulties to establish their brands. Hence, if there is a recognition of single colour, then the small companies would build their unique identities through creating a different use of colour. For instance, homegrown eco-friendly products packaging always resembles with green shade of colour, but this single colour recognition has not been accepted which does not get protection in India, leaving it vulnerable. Suppose, if the recognition for the products has been accepted then, the domestic businesses to innovate and help them to compete internationally. By recognition, the Indian enterprises get a fair chance to create unique identities.

6.6 Judicial consistency and clarity

There are unpredictability and inconsistency in judicial decision, because of lack of explicit recognition of single colour mark. Courts have acknowledged the combination of colour in consumer perception, but they remain silent in recognizing single colour leaving business uncertain about the outcome of the litigation. For instance, it can be referred in the case of Colgate Palmolive vs. anchor - where the question arose that whether a single colour could serve as a trademark. Due to this if there arose any issue relating to colour infringement, then they should depend on case-by-case litigation and there are no proper statutory guidelines. If the single colour has been recognised then the dispute would be easier to solve, and the business will have great confidence about their investment and its protection.

Judicial clarity will directly link with international global practices which would boost our economic standards.

6.7 Economic value of colour branding

Colour carry a very strong economic and psychological value in branding. Consumers loyalty and their trust towards a single product can be easily looked into by colour. A strong instance is that Christians Louboutin’s red soles, which is distinctive and create a sense of exclusivity. Therefore, recognition of single colour in India would be a reform with multiple benefits. For the harmonization of India’s intellectual property framework with global standards should be complied. Brand owners and also consumers welfare be protected and enhance business friendly jurisdiction. Recognition of single colour mark in India is considered as a social and economic imperative.

7. Jurisprudential barrier in Recognising Single colour Marks:

The recognition of single colour marks both scientifically and legally are believed to be difficult

in the past, and in the present even. The factors which make the process of such recognition complex were ‘distinctiveness’ and the meaning of the text ‘colour’. The deep insights of the two factors are that when it comes to single colour identification it doesn’t have both inherent distinctiveness and a common universally accepted meaning or the definition4. When an idea or an element is to be scientifically admissible it must be universally acceptable, observable or experimental, and must rely on empirical evidence. Colour doesn’t have any common definition or meaning common among all the countries. Also, there is no universally recognised or accepted definition for the same. Though the primary colours such as blue, red, green, etc. , satisfy the qualities of science, secondary colours fail.

Secondary colours which are formed through the mixture of two primary colours lack their identification distinct from others making it difficult for recognition. Their empirical evidence is retrieved by observing and experimenting with the primary colours mixed for developing the secondary colour. This shows the scientific recognition of colours is prima facie difficult which makes the colour marks nonrecognizable.

7.1 Distinctiveness - Piece of identification

The Legal recognition of the colour marks in general requires the dilution of the term colour and making the complex process of distinctiveness simple5. Stepping into the core thing distinctiveness meaning the easy detectability of the customers from the other goods and services, gives the clarity that not all colours are inherently distinguishable. Some colours are never inherently distinguishable6. For instance, in the case of Cadbury India Limited Vs. ITC Limited7 the issue of distinctive character of the purple colour used in its product packaging was dealt. Cadbury raised the proof of long-term usage and identification by the customers for proving the distinctiveness. The function of proving the distinctiveness becomes vital when it comes to registration. The trial court ignored the claim made by Cadbury and decided in favour of ITC.

But in the appeal before the Bombay High Court the judgement favoured Cadbury as the court accepted the proof for long-term use. Court added that the gold-and-purple combination was unique to Cadbury and uncommon in commerce, and that regular consumers, 4 Shekhar, Anjali, and Nikhil Jain. "Beyond Logos: Non-Traditional Trademarks and Their Legal Perspective. " (2025).

5 Can A Single Colour Mark Acquire Registration In India? - IPLF, (Jan. 27, 2023),

https://www.ipandlegalfilings.com/can-a-single-colour-mark-acquire-registration-in-india/. 6 Anne Gilson LaLonde & Jerome Gilson, Getting Real with Nontraditional Trademarks: What's Next after Red Oven Knobs, the Sound of Burning Methamphetamine, and Goats on a Grass Roof, 101 TRADEMARK REP.

186 (January-February 2011).

7 Cadbury Ltd. And 2 vs Itc Ltd. And 1 on 20 July, 2005

particularly kids, may be easily misled. Given that the defendants had just recently adopted the contentious packaging and that Cadbury had demonstrated past use and the risk of deception, Cadbury was entitled to protection against passing off because the balance of convenience was in their favour. As the purple in its singular form got recognition before the Indian Court. To prove the difference, one must show any one character or sign of colour capable of being recognized by the customers. Literally, the colour is meant to be distinct when its uniqueness is identified prima facie by the customers. Therefore, the colour becomes an indicator for the source of a product or a service of one organisation from the other.

Though the identification, long-term usage and demonstration of character of colour stands as a key initially, the broader concept of distinctiveness is still a unique path which the organisation or the firm using the colour must prove for its legal recognition. This circumstance shall be clearly viewed in the case Colgate Palmolive Company and Another Vs. Anchor Health and Beauty Care Private Limited8. The anchor company created an unfair competition and confusion by selling a product which has similarities with Colgate having colour combinations of red and white. The Delhi High Court in this case laid down that the anchor has similarity with Colgate and the consumers who are illiterate can even identify the Colgate with those colours. This duplication of colours creates an unfair competition and confusion among the public who are utilising the products of Colgate.

The court also added that even a single colour has its own distinctiveness and shall be protected under The Trademarks act, 1999.

7.2 The uncertain locution of ‘Colour’:

The second major factor affecting the recognition of single colour marks is the commonly accepted meaning of the term ‘colour’. The definition of colours differs from country to country and from circumstances to circumstances. Also, they are diversified based on two important features under colour of law - colour as a right, and colour as a title9. The legal perspective of these two features refers the term colour (in the view of right) as a justification or excuse that are honestly believed in a state of facts and colour (in the view of title) as a holding of a semblance that includes right to possession or ownership which are legally enforceable per se. But these are general perspective of the colour references. When it comes to colour marks under Intellectual Property Law, the colour has different definition or meaning. The meaning under

8 Colgate Palmolive Company And Anr. vs Anchor Health And Beauty Care Pvt. Ltd. on 29 October, 2003

9 Peter Bowal & Devon Slavin, The Colour of the Law, 43 LAWNOW 33 (September/October 2018).

the trademark view refers to secondary meaning of the colour. The secondary meaning was interpreted by the court as ‘the mental association of buyers’10 which can be understood as consensus among people on identifying the mark or the dress of a company or a product or any anonymous company11. The secondary meaning of the colour necessarily covers the term ‘association’ which means connection between colour and the brand. But the main drawback is that the secondary meaning is one way link that is, it sets way to identify colour with the brand, but it can’t set colour itself a way to identify the brand. For instance, WHISKAS, a cat food brand with distinctive purple colour. Such brand was identified with purple colour associated with it and not the purple solely stands as a standalone identification for the brand12.

7.3 The Functionality Doctrine:

Another essential factor in addition to the above two main is the functionality doctrine which the colours must itself get satisfied13. To understand the doctrine of functionality the two aspects of functional and non-functional must be cleared out. The colour marks are protected in some countries (especially United States) when they are non-functional meaning the colours can neither be used nor be given unfair advantages on designs. When the colours are functional, they are considered useful and a phenomenon which gives an unfair competition for which legal protection as a trademark cannot be given. To find out the functionality of the colour the US Supreme Court in the case of Qualitex Co. v. Jacobson Products14 applied the ‘utilitarian functionality test’ to deduce the functionality of the green-gold colour used by the both the companies.

In this case, the Qualitex sued infringement of its single colour mark against Jacobson in which both used green-gold colour press pads15. The court gave emphasis on the functionality referring it as the factor which rise the competitive advantage among the firms. In simple terms, the colour is said to be functional when it affects the competitive advantage of the business by restricting the produce with one who has registered and when it does not allow others to use it due to the exclusive right given to the owners16. When it is non-functional, 10 Karin S. Schwartz, It Had to be Hue: The Meaning of Color “Pure and Simple”, 6 Fordham Intell. Prop. Media & Ent. L. J. 59 (1995). Available at: https://ir. lawnet. fordham. edu/iplj/vol6/iss1/2 11 David H. B.

Bednall , Phillip Gendall, Janet Hoek & Stephen Downes, Color, Champagne, and Trademark Secondary Meaning Surveys: Devilish Detail, 102 TRADEMARK REP. 967 (July-August 2012).

12 Ibid at 11

13 Gavin Foo Yeow Yang, Seeing a Brand in a Flash of Colour and a Trademark in a Red

Outsole: Registering Single-Colour Marks in the Fashion Industry, 31 SING. L. REV.169 (2013).

14 Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995)

15 Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995). (n.d.). Justia Law.

https://supreme.justia.com/cases/federal/us/514/159/

16 Single colour trademarks – A ‘grey’ area, Lakshmikumaran & Sridharan Attorneys (Sept. 10, 2025),

the colour does not create the unfair advantage over the product in the market so that it seldom attacks others to make use of such non-functional colour. The court considered the green-gold colour as non-functional in the case which gave protection under trademarks.

7.4 Critical Appraisal on the barriers:

The clear emphasis to conclude the part is that the colour recognition of trademark requires distinctiveness proving that the people can identify the product with the colour, should have a secondary meaning and must be non-functional in nature to get it protected under the trademarks. Though all these factors determine the recognition they don’t have any clarity on themselves prima facie while interpreting legally. But, unambiguity on the aim of not to lay a path for unfair competition and monopoly power of holding the exclusive right so that nobody can use it stands valid. This validity give rise to dissimilated usage of single colour among reputed companies making people much aware on their usage all over the world including India.

The wide manoeuvring begot the regulation among other countries (United States, European Union, United Kingdom, Japan, Russia and United Arab Emirates) either directly or indirectly (via judicial decisions), but not the India. The widespread use and litigation surrounding single-colour marks underscores the need for India to establish a coherent regulatory framework.

8. Felicity of Statutory Language: The Trade Marks Act, 1999 and Single Colour

Marks: The trademark act is compliant with the principles of TRIPS agreement and Paris convention because India is a signatory. A trademark can be composed of images, logos, short phrases, colours, words and even a compound of all these. It is a voluntary right and is considered as valuable business assets. The validity of a trademark is 10 years and it can be renewed by paying additional fees for indefinite period. Trademark protection is enforced through court orders and the trademark rights are considered as private rights. The registration of a trademark is a very complicated process and it takes 18 - 24 months for registration, and there should be no objection or opposition. The registration, protection and relief from trademark infringement are the main aspects and it is clearly given in the 1999 act. Under the trademark act, there are two types of trademarks: https://www.

lakshmisri. com/insights/articles/single-colour-trademarks-a-grey-area/.

a) Conventional trademark that deals with word, device, certification, service, logos etc., b) Unconventional trademark that deals with colour, sound, shape and smell marks. Colour trademark are unique visual expressions that leave permanent mark. An ongoing case which is related to colour infringement is PAYPAL vs. PAYTM - in this case both the PayPal and Paytm are the providers of digital payment, where PayPal works globally and Paytm concentrate only India. PayPal filed a case against Paytm for the use of same blue two -tone colour scheme which was used by them. PayPal also stated that, due to same colour the customer would get confused and also Paytm started a rapid growth and if Paytm enters global market, then PayPal business will face a downfall.

8.1 Section 2(1)(m) - Definition of ‘Mark’

This section defines “mark” in the trademark act of 199917. The term mark in the trademarks act include brand, device, heading, ticket, label, signature, name, letter, word, numeral, packaging, the shape of goods, or a combination of colours. The term mark encompasses a wide range of elements, such as; a. Visual elements - these are the most conventional form of trademarks, and for brand identity it serves as the basic building blocks. They include, device or logos, headings, labels, or tickets, brands and names and even letters, words, signatures or numerals that gain distinctiveness by using it. b. Product - related elements - apart from the trademark protection of logos or words it extended and gave protection to shape of goods. Hence, it is proved that trademark not only protect the names and symbols but also the feel and looks of the product. c.

Presentation elements - indicates the visual representation of goods and itself clearly used as an identification of brands. For example, the packaging colour of the ITC’s yellow and blue design yippee noodles, which itself has a distinctive identity and is capable of solving the legal disputes. d. Combination of elements - for the further protection of brand identity, this act permits 17The Trade Marks Act, No. 47 of 1999, S. 2(1)(m) (India)

a mix of logos, colours and shapes to function as a single mark. For example; kitkat’s red wrapper. The significance of this definition lies in its broad and flexible scope, which not only allows traditional words or logos but also packaging, shapes and colours which can be registered as a trademark. The graphical representation and distinctiveness are the basic requirements to ensure a brand identity.

8.2 Section 2(1)(zb) - Definition of the term ‘Trademark’

A trademark is mark which is capable of differentiating the goods or services from one person

to another and the graphical representation which includes the shape and combination of colours. Explanation - for chapter XII other than section 107 - it explains that a registered trademark is used to trade and to show a connection between the proprietor and the goods/services. For other provisions of the act - it also covers a mark that is used in connection with goods or services if the proprietor’s identity is directly shown or not. This also includes the certification trademarks and collective trademarks. It is a comprehensive framework for the protection of trade marks in India. It ensures that both the unregistered and registered trademark can function as trademark depending on the recognition and use. It protects the global trend of non- traditional trademarks. It also balances the consumer protection and proprietary rights. Libertel groep vs.

Benelux Merke bureau which is case which sought to register the orange colour as a trademark. It can be registered as a trademark if it had distinctiveness and graphical representation. This is a significant case because it internationally supports the principles of section 2[1][zb]18.

8.3 Section 9(1)(a):

Section 9 of the Indian Trademarks Act, 199919 consists of three sub-sections stating the grounds for refusal of registration of trademarks in India. The first sub-section talks about the grounds for refusal of registration of trademarks which includes lacks distinctiveness, describes the characters of the products, and being common in trade (sub-clauses of the provision). But this has an exception that when a trademark has acquired distinctiveness because of its long-

18 The Trade Marks Act, No. 47 of 1999, S. 2(1)(zb) (India)

19 The Trade Marks Act, No. 47 of 1999, S. 19(1)(a) (India).

term usage, then it can be registered. The single colour mark is considered not distinct or treated as if its distinctiveness cannot be proved. Because of this reason this section refuse registration within its scope20. But the Delhi High court in the case of Christian Louboutin SAS v. Abubaker and Ors remained silent with regard to recognition of single colour mark where it went with reversing the judgment of the single judge bench which said no single colour mark can be protected under the Trademark Act, 199921.

8.4 Section 10:

This provision of the Indian Trademarks Act, 199922 protects the combination of colours used by the companies in their products. But this section excludes statutory recognition of single colour mark though it is possible for single colour to acquire distinctiveness. This section consists of two sub-sections, where the first deals with the registration procedures of the combination of colours where the courts will look into the distinctive character of the particular combination of colour and the second has a wide scope where it says the trademark registered without specifying colour will not restrict the use of colours in the company’s product23. Although the single colour mark has its own distinct nature it was not included in the section.

The latter sub-section is vague where it says the company which registered the trademark without colour combination that is used in the product or which is planned to use it in the product can use any colour and not just to a particular shade of a colour. When it comes to the former sub-section it totally restricts to combination of colours and it rejects the inclusion of single colour marks per se. It says ‘wholly or partly any combination of colour’ and not the single colour24. But, the second sub-section widens the object of mark saying that when the trade mark was registered without any restriction of colours it is deemed to have registered for all colours.

The company for getting its trademark registered with combination of colour the provision says it has to prove distinctiveness, but, when registered without colour it shall be deemed that it can use any colours without restricting to a particular scope.

20 Akshaya V., Protection of Colour Trademarks in India, 5 INDIAN J.L. & LEGAL RSCH. 1 (2023).

21 Ibid at 20

22 The Trade Marks Act, No. 47 of 1999, S. 10 (India).

23 Trademark registration of colour marks, Business Mitra, https://businessmitra.com/blogs/trademarkregistration-of-colourmarks#:~:text=Case%20Study%201:%20Cadbury%20India,of%20the%20Trademark%20Act%2C%20199

24 Supra note 20

This creates confusion when a company uses only one colour as its identity and it wants the consumers to identify its brand with that one colour and not the combination of colour. To reduce this misperception the single colour needs registration and procedure for the same must be incorporated in the act. The single colour to get itself registered requires separate procedure as it differs from combination, for instance a colour which is unusual, peculiar, and consumers identifies business through it, then though it is a single mark its registration stands valid25. The capacity oof distinguishment is a major factor that determines the single colour registration26.

8.5 Section 30(2)(a):

Section 30(2)(a) is basically a defense for using the description or information. If a person uses a sign (even if it is registered) only to describe the nature or quality of goods/services - not to indicate the source - such use does not constitute infringement. Basically, trademarks are used to protect distinctiveness, not descriptiveness. Since colour is giving a descriptive meaning (e.g., freshness, eco-friendliness, warmth, danger, etc.). This section is preventing a situation where a single person can have a monopoly on a colour that is necessary for describing or identifying the qualities of a product.

9. Adjudicatory Trajectories of Single Colour Marks

The birth of the concept of recognition of single colour mark takes to mid of twentieth century which was actually a resistance period. The case evolution starts from Colgate Palmolive v. Anchor where the red and white combination of colour went through a dispute where court insisted on recognition of combination of colour marks for its long-term usage and rejected recognition of single colour mark in India27. Though the dispute of Colgate started during mid of twentieth century, it got decided in 2003. After few years in 1995, the Supreme Court of United States came up with a standalone judgement giving clarity for protection of single colour marks in the case Qualitex Co. v. Jacobson Products Co28. The court recognised the single colour mark and gave test for getting it registered. The test consisted of two main factors such as secondary meaning and the

25 Supra note 20

26 Supra note 20

27 Supra note 4

28 Supra note 1

functionality. This created a path way for the regulation, protection, and recognition of single colour mark. This case created a global impact for the same. Then during 2003 and 2004, European Union accepted the single colour mark laying down few conditions for its acceptance. The European Courts of Justice (ECJ) in Libertel Groep BV v. Benelux Trademark Office, recognised single colour mark as it had distinctiveness29. In 2016 United Kingdom also recognised purple colour (single colour) of Cadbury, made stringent rules, and was confident to protect against monopolisation. In 2012, the Delhi high court in Christian Louboutin Sas Vs.

Yves Saint Laurent America Holding Inc30 pointed to the red sole as a frequently recognized mark with a new meaning and thus gave it the status of protection but its later decisions have limited the scope of singlecolour marks and hold that colours as such are non-distinctive and belong to the public domain. The case was instrumental in clarifying that recognition of single-colour trademarks in India is still uncertain and depends on the level of distinctiveness of the mark in a particular case31. Then in 2018, Christian Louboutin brought a lawsuit against the defendants who sold counterfeit shoes with identical red soles. He asserted infringement and protection of goodwill under Sections 2(zb) and 29 of the Trade Marks Act, 1999. The problem was the red sole, which was considered a distinctive and protectable non-conventional mark under Indian law.

The Court in Christian Louboutin SAS v. Mr. Pawan Kumar & Ors32 referred to the red sole as a globally recognised trademark due to its worldwide reputation and secondary meaning, thus being consistent with the Qualitex Co. v. Jacobson Products Co. (U. S. ) ruling. The decision led to the possibility of singe-colour trademark protection in India, thereby stressing the importance of brand recognition and acquired distinctiveness through the use which is consistent and exclusive. In the same year in separate case of Christian Louboutin v. Abu Baker33 where Christian Louboutin took Abu Baker to court over the sale of fake shoes with the same red soles, accusing him of copying his signature design. The main point was if one single color (red) could be considered a trademark and thus be protected under the Trade Marks Act, 1999.

The Court refused such protection, stating that a single color does not have any

29 Supra note 2

30 Christian Louboutin S.A. v. Yves Saint Laurent Am. Inc., 778 F. Supp. 2d 445 (S.D.N.Y. 2011).

31 Louboutin’s Red Sole and Dispute Over its Protection in EU, S.S. Rana & Co. (May 2, 2018),

https://ssrana.in/articles/louboutins-red-sole-and-dispute-over-its-protection-in-european-union/

32 Christian Louboutin Sas v. Mr. Pawan Kumar & Ors., decided on December 12, 2017

33 Christian Louboutin SAS v. Abubaker & Ors., 2018:DHC:3489 or MANU/DE/1983/2018.

inherent distinctiveness and therefore cannot be a mark under the Act. It also declined support from the Qualitex case and questioned which way earlier rulings such as Pawan Kumar and Deere & Co. v. Malkit Singh were going, thus leaving the single-colour mark issue in a limbo. The judgement has the effect of reaffirming single colors as non-conventional marks that raise higher challenges of distinctiveness; that the use of a mark being functional or aesthetic disallows trademark protection; and that giving too much protection runs the risk of monopolization and thus hinder the principle of fair competition. In 2024, Delhi High Court insisted the perspective of recognising the single colour in the decision of Beiersdorf AG v. Hindustan Unilever Ltd.

In this case the blue colour tub was in pure blue colour with no other combination having distinctiveness from other brands, and satisfied secondary meaning. They were identified by the customers directly and was used more years. This famous Nivea case also didn’t give a clarity on the recognition of single colour marks.

10. Comparison Between India and Other Countries

10.1

EUROPEAN UNION

The recognition of single colour as trademark in EU was not that easy and there was hindrance. Phase 1 – till 2000: until the early 1990’s in the majority of European nation, colours could not be registered as a trademark. In Germany colours were only given a limited amount of protection under the rules of competition law which was unfair. The courts of the member countries also tried hard for the recognition and protection but witnessed difficulties. Phase 2 – after 2000 – 2010: during this period the foundational principle of jurisprudential aspect of single colour recognition was there in European nation. The ECJ [European court of justice] in the landmark case of Libertel groep vs. Benelux Merke bureau – in this case they set up a legal standard for the protection of single colour as a trademark.

Phase 3 -after 2010; even though this phase continued phase 2 but there was uncertainty in registration of single colour mark on a case-to-case basis. In the European union trademark law is governed by European union trademark regulation [EUTMR], 2017- this regulation establishes the rules and trademark protection across all the

EU member states. This even allows for the registration of non - traditional trademarks, which includes the colour mark. Community trade mark [CMT] system - this was replaced by the EU trade mark. The main feature of this system is, it recognises the single registration of all EU member states. Under the 2017 regulation EU trade mark system is the continuation of the CMT. Article 4 of EU trademark - this article defines trademark as a sign which has the capacity to represent graphically, and is capable of distinguishing the goods and services from one undertaking to another and should have a distinctiveness. Article 7 of EU trademark - a trademark to be registered it must have distinctiveness. A mark can be regarded as distinctive if it allows the consumer to identify the goods or services from one company to another.

For the registration of single colour trademark, it must consist of secondary meaning or should have a good reputation among the peoples. Next, for the combination of colours it must have a recognizable pattern which will distinguish their products from the others. This clearly indicates the commercial origin. Article 8 of EU trademark - deals with the refusal of trademark. This article states if there is an conflict with an earlier trademark which has been registered, then the new one can be refused. For colour marks, even the single colour or combination of colour is distinctive but if it causes any confusion among the consumer, it can be refused. Article 3 of EU trademark - capability of graphical representation of trademark. For colour trademark, the exact shade should be identified which will avoid confusion and can secure legal protection.

This recognizes the registration of single colour as trademark. 10. 2

UNITED STATES OF AMERICA

Before 1950’s The US trademark law was not interested to recognize the single colour mark as trademark within its jurisprudence. LESHEN & SONS ROPE Co vs. BRODERICK JACOBSON PRODUCTS Co. In this case it was stated that if a colour does not meet its primary function, then it cannot be registered as a trademark.

For the recognition of single colour as a trademark in the USA is governed by the LANHAM ACT. In the case of CAMPBELL SOUP vs. ARMOUR & CO. - this case was frequently cited for trademark jurisprudence in the United States. This case also emerged as an example that explains the difficulties in recognition of single colour as trademark. Campbell sop decided to carry out the exclusive right on the use of red colour for their soup labels. This was rejected by the court, because if one company is allowed to monopolize a common colour like red, then it would restrict other companies from using the colour in same market, especially in soup industry. Under this act colours are not originally considered to be registrable as trademark, but after the 1995 amendment, if certain conditions are met then colour can be registered as trademark.

The conditions include; a) a colour to be linked to a particular brand, it must serve as a source identifier. b) the colour to be registered as trademark it must not have any functional purpose in the service or products. c) the most essential thing is that it must have a secondary meaning d) it must not create any disadvantage to the competitors. The Colour Depletion Doctrine The colour depletion theory emerged as the advanced argument by the US courts during the era of recognition against the single colour as trademark. This theory clearly stated that colours are limited and finite resource. If a single colour was granted with an exclusive right, then the competitors will not have an options for their packaging or branding. This would clearly result in the monopolization of colour palette During 1950’s to 2000 This second phase witnessed a significant evolution in judicial thought.

Until the mid - 20th century, they refused to recognise the single colour as a trademark and it was mentioned in colour depletion theory and shade confusion theory. The shade confusion theory which stated that whether a particular shade would constitute infringement between the consumer and the court. The colours were granted protection if it is combined with words, device or patterns. During the 20th century, due to the growing consumer culture and advanced technologies the

colour could acquire distinctiveness and function as a powerful source of brand identity. The Owens – corning case of 1985, this was the first case in US which discussed about the recognition of single colour as trademark. This was a manufacturer of fibreglass insulation, which used the pink colour for their insulation products. The court dismissed the colour depletion theory. Hence, the court held that pink colour acquired distinctiveness which is sufficient to qualify as a trademark. The Qualitex co. vs. Jacobson products co. 1995, qualitex is a company which is manufacturing dry cleaning press pads, used green – gold colour on its products and hence registered as a valid trademark. The Jacobson was the competitor also used the green – gold product for its pads which leads to a dispute.

The issue was put before the Supreme Court of US, whether a single colour can be registered as a trademark under the Lanham Act. It was held that a single colour can function as a trademark by itself. Justice Breyer, stated that like, shapes, sound, scents, colour also could serve as a fundamental purpose of trademark. The court laid down two conditions to be satisfied; 1. secondary meaning, 2. must not be functional in nature. During 2000’s After the decision of Qualitex case, the problem relating to the recognition of single colour as a trademark has been settled. The US courts acknowledge the single colour marks. In the case of Wal – mart stores vs. Samara bros, in this case it was held that single colour can be recognised as a trademark, if it has distinctiveness for its considerable use. 10.

3 United Kingdom Usually colour marks fall under the category of non – traditional trademark and their registration always face difficulties. At first in UK colour alone is not considered as sufficient to indicate the origin of goods. Single colour was not recognised as brand identity by the consumers. Like the EU, the UK courts and authorities also took approach for the recognition of single colour as trademark. Colour always have a psychological effect on consumer perception through their distinctiveness. Colours help in building market loyalty, recognisability and emotional connection to the industries like cosmetics, food and beverages and for packed goods and make them look different from the one another. The Cadbury’s case was one of the most significant case which deals with the recognition of single colour as a trademark.

Cadbury sought to register its purple colour of its chocolate

product which contains Pantone number 2685C. They claimed that colour is being applied to the predominant colour applying to the whole packaging or the whole visible surface of the packaging. The Nestle was the direct competitor to Cadbury and they opposed the application of Cadbury. The court of appeal agreed with the application of nestle and they stated that the description was not clear. They word predominant used was vague and the sign did not match the description. Cadbury again filed three more applications to UK Intellectual property office. The Nestle again objected it but there was a settlement between the two companies. The final judgment declared by the court is that a single colour trademark can be registrable, but they must be described in a very specific and limited way. Justice Mr.

Mead, while delivering the decision declared that single colour recognition is considered to be valid if it follows certain criteria; it must have distinctiveness, which means the colour should identify the goods; it should be clear and precise, means the consumer should be able to understand it; easy accessibility; it must be objective and not subjective; it must be durable meaning it must be valid over time. This conditions generally means that how and where the colour is applied on packaging or products. Secondary meaning requirement – colour mark must acquire a secondary meaning in the market. For example, let us take the purple colour of Cadbury, the low – quality products also used the purple colour in its products which led to the damage of Cadbury’s reputation.

Hence, the high court considered this as a valid argument and held that secondary meaning is very important in recognition of colour mark

11. A comparison of India, UK, US and EU in recognition of single colour as a

trademark

system and also the court of justice of the European union played a vital role. influenced by the EU case law. developed a clear doctrines. Recognition Single colour mark as a trademark can be recognised in EU if it has colour distinctiveness and it should be clear with pantone code. In UK the recognition of single colour as trademark is acceptable but it is very restrictive in practice. Precise representation and distinctiveness is required. The US trademark act explicitly recognised the colour mark and it has a stated that it should be non – functional and have acquired secondary meaning. In India, the recognition of single colour mark remains uncertain. The trademark act clearly says only about the combination of colours and is certain circumstances single colour can be recognised if it acquire distinctiveness.

Requirement of distinctiveness It strictly complies with the inherent or acquired distinctiveness through secondary meaning Strong and acquired distinctiveness is required by proving there is long use and market evidence. It is flexible and consumer should have connection between the colour and colour source. Since law is silent, court demands very strict adherence to acquired distinctiveness.

terms are rejected and acceptance depends court.

12. Conclusion

As the reason for usage of single colour in products by companies is to distinct them from other making them competitive in market and giving the consumers an easy way of identification of their product. The absolute recognition of single colour will create monopolisation so that such colour cannot be used by others. Analysing this conflicting notion developed countries had regulated this in such a way where United States of America enacted Lanham Act, 1946, United Kingdom regulated in the Trademark act of 1994, and European Union added it in European union trademark regulation [EUTMR], 2017. In conclusion, Indian legislature and judiciary in the current scenario are in position to take necessary steps for protection of single colour mark on the basis of its usage in certain specifications of products.

13. Suggestions:

The recognition of single colour mark in various countries was based on the criteria such as secondary meaning, functionality and distinctiveness. Considering all the statues and precedents India shall incorporate the notion of recognition of single colour mark usage in specifications of products showing the distinctiveness under the ambit of the Trademarks Act, 1999.

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