Single Colour Mark: It's Registrability in the United States and the United Kingdom

Non-traditional trademark, also known as a non-conventional trademark is any type of trademark which does not belong to a
pre-existing, conventional category of trademarks, and which is often difficult to register, but which may nevertheless fulfill the essential trademark function of uniquely identifying the commercial origin of products or services.

The concept of non-traditional trademarks is an innovative concept as it introduces an entirely new family of marks discrete and distinct from the traditional trademarks. A trademark ordinarily comprises of a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or any combination thereof and a general perception about it is that it is a static, two-dimensional word, design or logo used to identify a product or service . But this family of Non-traditional trademarks on the contrary comprises of a number of different types of trade marks which do not belong to the conventional category, of words, numerals, pictorial and logo marks, or any combination of these marks, and yet serve the essential purpose of a trade mark by identifying the products or services as being from a particular undertaking. Non-conventional trademarks may therefore be visible signs (eg. colours, shapes, moving images, holograms), or non-visible signs (eg. sounds, scents, tastes).

As such, non-traditional trademarks comprise of marks based upon sound, texture, three-dimensional shape, taste and smell and following members comprise it:
1. Colour marks
2. Sound marks
3. Smell/Scent/Olfactory marks
4. Shape marks
5. Moving Image marks
6. Holograms
7. Gesture marks
8. Taste marks/Gustatory marks
9. Feel marks/tactile marks
10. Celebrity marks
11. Digital marks
12. Trade Dress
These trademarks are exceptional and unique in nature because unlike their traditional counterparts, they are sometimes non-ocular eg: sound, smell, feel and taste; some are not static like moving image marks and digital marks; and others such as gestures and holograms, which have revolutionized both the fields of trademark law and marketing. Some of these have been more widely accepted in recent times as a result of legislative changes and the broad-mindedness of the judiciary, which have cumulatively led to the expansion of the definition of the term 'trademark'. The definition of the term trademark varies from nation to nation. A few countries like United States of America, most countries forming the European Union like Germany, the Benelux countries, United Kingdom, etc. have given recognition to non-traditional mark thereby including colours, sounds, smells, etc. in their definitions. Some countries on the contrary have chosen to not make amendments to their trademark laws to include these marks and are still restricted only to a static, two-dimensional trademark.

The International scenario on the contrary is rapidly changing. International treaties, Documents, Directives dealing with intellectual property, such as the Agreement on Trade-Related Aspects of Intellectual Property Rights, NAFTA (North America Free Trade Agreement), the EU Harmonization Directive and the EU Regulations, are giving recognition to non-traditional trademarks, in one form or the other.

Besides being internationally recognized, non-traditional trademarks have been accorded the same status by the national laws of various nations, through both legislations and the efforts of the judiciary as has been briefly discussed above. Like for instance in the United Kingdom, colours have been granted trademark protection when used in specific, limited contexts such as packaging or marketing. The particular shade of turquoise used on cans of Heinz baked beans can only be used by the H. J. Heinz Company for that product. In another instance, BP was granted the exclusive right to use green on signs for petrol stations. In the United States also, it is possible, in some cases, for colour alone to function as a trademark. Originally, colour was considered not a valid feature to register a trademark Leshen & Sons Rope Co. v. Broderick & Bascom Rope Co. Later, with the passage of the Lanham Act the United States Supreme Court in the case of Qualitex Co. v. Jacobson Products Co, would rule that under the Lanham Act, subject to the usual conditions, a colour is register able as a trademark.

Other marks like sounds are register able in many countries. Although these possible trademarks have not yet reached a high acceptance among lawyers, jurists and the courts, they are of common use in marketing and practitioners are familiar with the sensory signs as an essential part of an innovative trademark and product strategy. Thus all sensory signs such as audible, visual, gustatory, tactile and olfactory have become part of such developments. These non-traditional trademarks go beyond the simple words and designs that businesses have long used to distinguish their goods from those of other companies. Some examples of registration of non-traditional trademarks are like the floral scent of thread, the colour pink has been registered for insulating material and a pattern of chimes has been allowed registration for the broadcasting of television programmes. My third issue deals specifically with the Colour Trademarks and it has been explained in detail under the subsequent sub-heads.

Colour Trademarks

Due to the invention of colour television and the new possibilities in the print industry, colour has increased in importance in both the advertising and the packaging industry. Businesses pay more attention to colour as it can have more effect on sales because people have colour preferences and they also sometimes associate it with their culture. For instance the colour black represents evil in western countries, red is a symbol of luck and happiness in China, etc.

Thus colours and colour combinations play an important role in distinguishing products in the marketplace, and are particularly useful where consumers do not easily understand traditional trademarks. This could be due to low literacy rate in that area, or because of the reason that the traditional trademark is written in a different language altogether incomprehensible by the consumer. So colour marks assume added importance because they overcome the language or cultural barriers faced by traditional words or device marks. In such circumstances a colour which has long been associated with a particular product only, sometimes tends to inform the illiterate and ignorant consumer about its source.

For instance the colour purple can be recalled as the colour of Cadbury Chocolate even if the words Cadbury Chocolate are written in Chinese, Japanese or any other language. It is thus axiomatic that when a mark or a sign is capable of identifying its source and indicates a connection in the course of trade between the goods or services and some person having the right, either as a proprietor or by way of permitted user, to use the mark, whether with or without any indication of the identity of that person, the mark can be elevated to the status of a registered trademark. As a result businesses try to choose colours with a maximum psychological appeal, visibility and symbolism to represent their products.

A Single Colour mark though known to all and sundry previously, has actually come to be recognized as a potential trademark, lately, therefore, it can be called as a non-traditional trademark. A Single Colour has been considered registrable as a feature of a mark . Over the last few years the number of applications for registration of colour marks has been swelling. Colour marks found their way to the mainstream because of the dire need for more innovative concepts to grab the attention of the consumers and mesmerize them. Moreover, it is a proven fact that people get more attracted towards things that are colourful and hence look beautiful.

Exploiting this predisposition of human beings, companies and large businesses have introduced either colours per se or a combination of colours for making their products, attractive, conspicuous and eye-catching. The legal aspect to this strategy is that the colours per se should be protected by the businesses in their own name as their legitimately protected trademark, but their registration is a Herculean task for the companies due to the numerous and diverse formalities and pre-requisites standing in the way of final registration.

A single colour considered in the abstract, is capable of becoming a trademark, but it faces certain obvious hurdles in order to get itself registered. It has been held that a single colour is never inherently distinctive . Unless the mark is for very specific goods or for a very specific clientele, or comprises a colour or shade which is extremely unusual and peculiar in the relevant trade, it cannot have inherent distinctiveness.

The examination of single colours thus requires very careful analysis since the effect of acceptance is to bar competitors from using those colours. Accordingly, to seek registration of a colour mark on the Principal Register, it must be shown that the colour mark in question has acquired distinctiveness.

The courts and the Trademark Office examine the following several factors in attempting to ascertain whether a single colour has achieved secondary meaning:
a) Extent of Third Party Use
b) Sales and Advertising
c) Use of Trademark Legend
d) Promotional Items
e) Sales Calls
f) Monitoring Competition
g) Consumer Studies
h) Unsolicited Media Coverage of the Product that Highlights the Colour in question
i) Consumer Letters and Inquiries
According to Section 45 of the Lanham Act, 1946 the term trademark includes ?any word, name, symbol or device, or any combination thereof:
(i) used by a person, or
(ii) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Further the preamble of section 2 of the Lanham Act states that: [n]o trademark * * * shall be refused registration on the principal register on account of its nature,? unless one or more specific exceptions to register ability set forth in that section apply. * * *

The definition of a trademark under section 45 does not patently identify colour mark as a trademark, but it also does not specifically exclude it. This statutory definition is broad enough to encompass non-traditional trademarks and that existing statutory and common law principles would suffice to ensure that only those non-traditional trademarks that meet the essential requirements of a trademark are monopolized. Through legislation and through several decisions, the Courts of United States of America have recognized, registered and protected colour, both as a combination and a colour per se. The jurisprudence under the Lanham Act developed in accordance with the statutory principle that if a mark is capable of being or becoming distinctive of applicant's goods in commerce, then it is capable of serving as a trademark. Section 2 of the Act further clarifies the position by stating that no trademark shall be refused registration on account of its nature unless one of the stated exceptions listed in the statute applies. And since a colour does not figure out in any of the exceptions, its registerability cannot be per se challenged.

Previously, the scope of the term trademark was restricted to traditional forms of trademark only, but gradually, under the Lanham Act, trademark registration became available to many types of previously excluded indicia, one being a single colour mark. Change was gradual and evolutionary. It was previously declared to be non-registerable in a catena of judgments in the United States of America, but later on came to be recognized as a trademark. The mark has indeed had a chequered history and its progress to its current stature shall be depicted through two phases- First phase will show the position before the decision in the case of Qualitex Co. v. Jacobson Products Co. Inc., and the subsequent phase would demonstrate the position after this decision.

Phase I: Position Before The Qualitex Decision
Initially, a colour mark was not considered as a trademark. The rationale underlying the conception was that it?s a weak mark as it cannot identify and indicate the source of the goods to the consumer. This can precisely be perceived from a catena of judgments, the earliest of which is of Leshen & Sons Rope Co. v. Broderick Jacobson Products Co. , wherein the court refused registration to a single colour mark saying that it could not serve the function of a trademark and so was not capable of registration. In a similar case of Diamond Match Co. v. Saginaw Match Co. , also the court refused registration to a single colour on the same rationale as stated above. Thereafter, in 1949 following the same ideology, in the case of Campbell Soup Co. v. Armour & Co. , the Court of Appeals denied the rights in the familiar horizontal red and white Campbell's Soup labels to the proprietor. In all the three aforementioned cases, ostensibly, the court got swayed by the rationales of Colour Depletion or Colour Monopolization and Shade Confusion Former, connotes that already there are less easily discernible colours and once all are taken in an industry, the new entrant, may be deprived of a needful element of competition. In other words, if a valid trademark registration is given to a colour, then the proprietor of it would enjoy an exclusive right to use that colour, thereby preventing any other from using it. This in turn would lead to a depletion of colours. The second justification given by the Third Circuit court means that the single colour would create confusion in the minds of consumers as there would be others also who would be using a similar shade to market their products. This might lead the consumers to believe that the goods of other manufacturers are those of the proprietor of the colour mark, who is using a similar shade. The traditional rule, however, did not absolutely bar the registration of colours. It allowed the registration of a colour only if it was an integral part of an arrangement of colours, symbols or words, but a colour per se was not so allowed.

Court in the case cited in the previous paragraph clearly stated, if color be made the essential feature, it should be so defined, or connected with some symbol or design, that other manufacturers may know what they may safely do.However, there was a twist in the law through the case of In Re Owens-Corning Fiberglas , in which the Court of Appeals for the Federal Circuit broke with this tradition, declining to state a general rule against registration of colours as marks, stressing that each case should be judged on its particular facts. In this case the court found that the colour pink could be registered as a trademark for the applicant's fibrous glass residential insulation.

The court noted that the colour had been arbitrarily chosen and served no utilitarian purpose in connection with the product. It elucidated that while the colour by itself was not inherently distinctive, it had acquired a secondary meaning i.e. the public had come to associate the colour as an indication of origin. This was due to the applicant's pink panther advertising, which emphasized the colour of the product. But even after this judgment, during the following decade, there was a marked disagreement amongst the courts on this issue. While the Court of Appeals for the Eighth Circuit aligned itself with the Federal Circuit's view, the Seventh and the Ninth Circuits refused to recognize colour alone as a trademark. This ideology thus kept on haunting the registration of single colour trademarks till the landmark judgment of the U.S. Supreme Court in the case of Qualitex Co. v. Jacobson Products Co. Inc.

Phase II: Position After The Qualitex Judgment
In the case of Qualitex Co. v. Jacobson Products Company, Inc. , the Petitioner is the Qualitex Company that had been using a special shade of green-gold colour to the dry cleaning press pads that it had been manufacturing since 1950's. After the respondent Jacobson Products (a Qualitex rival) began to use a similar shade on its own press pads in 1989, Qualitex registered its colour as a trademark in year 1991 and added a trademark infringement count to the suit that it had previously filed challenging Jacobson's use of the green-gold colour on the press pads. Qualitex won in the District Court, but the Ninth Circuit set aside the judgment on the infringement claim because, in its opinion the Trademark Act of 1946 (Lanham Act) did not permit registration of colour alone as a trademark. Then the writ of certiorari was filed in the United States Supreme Court by Qualitex Co., which reversed the decision of the Ninth Circuit. Breyer, J., expressing the unanimous view of the court, held that,
(1) the Lanham Act permits the use of a colour, pure and simple, as a trademark
(2) a colour may sometimes meet the basic legal requirements for use as a trademark, and
(3) no arguments were presented that would justify a special legal rule preventing colour alone from serving as a trademark.

The court observed that the Lanham Act gives a seller or producer the exclusive right to "register" a trademark and to prevent his or her competitors from using that trademark. Both the language of the Act and the basic underlying principles of the trademark law would seem to include colour within the universe of things that can qualify as a trademark because the language of the Lanham Act, 1946 describes that universe in the broadest of terms. It stipulates that trademarks "include any word, name, symbol, or device, or any combination thereof." Since human beings might use as a "symbol" or "device" or almost anything, all that is capable of carrying meaning, this language, read literally, is not restrictive. The courts and the Patent and Trademark Office have also authorized for use as a mark a particular shape of a Coca-Cola bottle , a particular sound of NBC's three chimes , and even a particular scent of plumeria blossoms on sewing thread . So if a shape, a sound, and a fragrance can act as symbols why, one might ask, can a colour not do the same.

Just as a single colour mark has found place in the Trademark law of United States of America through judicial pronouncements, it has been successful in making its presence felt in the Trade Mark law of United Kingdom too. Section 1 of the U.K. Trade Mark Act, 1994, stipulates that a trademark means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings and that a trademark may, in particular consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging. The definition though, does not expressly make a mention of colour as a trademark, but it obviously does not lead to the conclusion that colour has been excluded from it. Similar to the definition of a trademark under the Lanham Act, 1946, this definition too is inclusive and the United Kingdom has indeed come to recognize and register colours as trademarks, the glaring examples of which are- the colour silver in connection with anthracite briquettes, the colour red applied to the pin of a shackle, three red bands on the handle of tennis, badminton, and squash rackets and the colour green applied to the exterior surface of a building.

Such recognition and acknowledgment of the colour mark can be attributed to a few international agreements and treaties. One such very important agreement is the Agreement on Trade-related Aspects of Intellectual Property Rights (hereinafter the TRIPS Agreement), which was approved on behalf of the European Community by a Council Decision . Article 15(1) of TRIPS identifies the scope of a trademark as, Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trade mark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combinations of such signs, shall be eligible for registration as trade marks. Where sings are not inherently capable of distinguishing the relevant goods or services, Members may make registerability depending on distinctiveness acquired through use.

Members may require, as a condition of registration, that signs be visually perceptible. This definition thus indicates that any sign that is capable of distinguishing the goods or services of one undertaking from those of other undertakings, that is either inherently distinctive or in the absence of inherent distinctiveness, has acquired distinctiveness and can be visually perceived, shall be capable of constituting a trademark. To further substantiate the acknowledgment of colour mark as a trademark, Article 2 of the Council Directive (89/104/EEC) of December 1988 is worded as follows:
A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. Article 3 of the Directive, headed Grounds for refusal or invalidity provides:

The following shall not be registered or if registered shall be liable to be declared invalid:
(a) signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods;
(d) trade marks which consist exclusively of sings or indications which have become customary in the current language or in the bona fide and established practices of the trade;

Nowhere in the above-mentioned legislative provisions is a colour mark excluded, but still there is need to examine this question in the light of judicial pronouncements. This extreme scenario was thus put before the Court of Justice in the case of Libertel Groep BV v. Benelux-Merkenbureau. Though this case was not decided by a U.K. Court, yet it has an immense significance and bearing on the issue being discussed currently. It being a landmark judgment dealt with the various aspects/issues involved in the registration of a single colour mark. It clearly and emphatically acknowledged the requirement of distinctiveness, either inherent or acquired of the colour mark and said that such an assessment should take the interests of third parties into account.

As regards the pre-requisite of graphical representation, the court cited the judgment of Sieckmann's case wherein the principle of graphical representation was elucidated by stating that it should be clear, precise, self-contained, easily accessible, intelligible, durable and objective. In this case, Libertel had applied for the registration of the colour orange per se and in the box for reproducing the trademark, the application form contained an orange rectangle and in the space for describing the mark it contained, the word orange without reference to any colour code.

The court held that a mere sample of a colur is not durable enough, as it may fade. In other words, a colour sample on its own would not satisfy these criteria because it would be prone to deterioration. And it may also change slightly depending on the background on which it is printed or put. Thus the sample coupled with the verbal description and the internationally recognized colour identification code of the colour should be stated in the application.

The international colour identification code such as the Pantone® system, RAL, etc. could be acceptable for these purposes.

Whilst protecting the registered single colour marks, unregistered colour marks have also been protected under the theory of passing off. However, the Court also noted that it was legitimate to take into account the desirability of keeping available colours for use by competitors operating within the same field. Whilst in principle a colour per se may have sufficient distinctive character to be registerable, members of the public would not necessarily view a colour per se in the same manner as a word or figurative mark. As such, the Court stated that in the case of an application for a colour per se, it was inconceivable that such a mark would be deemed distinctive, save in exceptional circumstances and particularly where the number of goods or services for which the mark is claimed is very restricted and the relevant mark is very specific.

From this it can be deduced that there is no blanket embargo on the registration of a single colour as a trademark, according to the courts of United Kingdom. As consumers are not in the habit of making assumptions about the origin of goods based on their colour, or the colour of their packaging, in the same way they do with a word or figurative mark, a colour by itself is not normally inherently capable of distinguishing the goods of a particular undertaking. However, a colour can acquire distinctiveness through use after the normal process of familiarizing the public has taken place. When assessing distinctive
character, the court must make the examination by reference to the actual circumstances of use and not simply in the abstract.

The author can be reached at: [email protected] / Print This Article

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