INTRODUCTION
Imagine someone mentions ‘red-soled heels’. The first thought that springs in the mind of an individual would be – Christian Louboutin, the iconic heels that have dazzled on red carpets and international magazines. Red, once a mere colour has now become Louboutin’s signature; signifying colour trademarks which is one of the most fascinating developments in the field of Intellectual Property Law.[1] Colours were long excluded from areas of Intellectual Property; they were viewed as aesthetics rather than a source identifier that differentiates one brand from another.
From the unique purple packaging of Cadbury chocolates to the robin egg blue of Tiffany’s jewellery box, colours have now become the trademark of leading luxury brands.[2] Yet, the road to secure exclusive protection for colours raises countless critical and legal questions – Can a specific colour be monopolized? What should be the ideal threshold for a company to secure such protection? What precautions the courts must take to attain equilibrium while maintaining fair competition and brand recognition?
Contemporarily, there is no global consensus as such to trademark a colour.[3] This study will explore the legal impediments, complex policy dilemmas and international disputes such as the battle between Christian Louboutin and Yves Saint Laurent (YSL) and Cadbury’s petition for its unmistakable packaging. It argues how colours are increasingly being recognised as Intellectual Property assets and how courts exercise their powers to maintain free and fair competition in the market.
THE CONCEPT OF COLOUR TRADEMARKS
Trademarks are a kind of Intellectual Property governed under the Trade Marks Act, 1999, consisting of a slogan, word, symbol etc. that distinguishes one product from another.[4] If we go back in the history of trademarks, the idea of owning colours was a bit absurd because they were considered rarely distinctive. Another important consideration is that colours cannot serve a functional purpose. Since colours fall under the category of non-traditional trademarks, courts generally require a solid testament for the fact that it has acquired a secondary meaning[5]; people connect it strongly to a specific brand.
A pivotal turning point in the case of colour trademarks came after a judgment was established by the government of the United States in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995).[6] It served as the core of this entire theory. Qualitex had been using a green-gold colour for its dry-cleaning press pads. On the other hand, its competitor Jacobson, also started using the exact same colours on their pads which eventually forced Qualitex to file a petition against them. Qualitex won despite countless legal impediments and finally got the green-gold shade registered as its trademark with the United State Patent and Trademark Office (USPTO). This judgment paved the path for fashion industries, pharmaceutical brands, food sectors etc that would rush through it in the coming years. Also in the latest surveys, statistics have revealed that between 62% and 90% of a consumer’s judgement of a brand or goods and services is initially based on colours.[7] That’s the reason for companies to devote and invest a good amount for maintaining their monochromatic identities.
THE RED SOLE DISPUTE: THE LOUBOUTIN V. YSL PRECEDENT
Louboutin’s iconic high-heeled shoes were introduced in the fashion market in 1992. Known for its bright, lacquered red-bottom soles, Louboutin has been undefeatable. Over time, their design became synonymous with a luxury brand, which made it an instantly identifiable symbol. In 2011, YSL introduced its monochromatic shoes collection with red soles; they got sued by Louboutin for infringing their trademark in the US.[8] The issue escalated on a single legal question – Whether a colour, limited to only a part of the product can be granted exclusive protection or a trademark for the sake of monopoly?
Louboutin won the case in a lower court but later, it was overturned by the United States Court of Appeals for the Second Circuit. The court held that the red colour could work as a trademark only if it contrasted with the entire shoe.[9] It put limited restrictions on the brand and said that a colour would be considered a trademark only in specific contexts. Since YSL launched ‘monochrome heels’ with an all-red silhouette and not just red-soles, they were granted the permission to continue with their shoes without any complex legal hindrance.
This case, therefore, has become a cornerstone example in the Intellectual Property area. It also illustrates how courts contemplate and maintain fair competition in the market.
THE PURPLE MONOPOLY DEBATE: CADBURY’S BATTLE FOR THE PURPLE TRADEMARK
Another relevant example for the same includes the petition filed by Cadbury to register the specific shade of purple colour they use in the package as their trademark. Back in 2013, Cadbury argued that the purple colour has become the visual of Cadbury in people[10]; they registered to gain exclusive rights over the Pantone 2685C for their chocolates and other products. After presenting needful testaments in the court like consumer surveys, market history etc. to show the constant trust of people, initially in 2012, Cadbury was permitted to register its trademark. It was held that consumers strongly associated the purple packet with Cadbury products.
Nevertheless, in 2013, the scope for Cadbury’s initial claim got bounded due to filing of subsequent appellate petitions against it. Later, the court put emphasis on the fact that the description of the colour for claiming sole rights must be precise and clearly defined[11]; ambiguous claims to register ‘a shade of purple’ could create unfair competitions and monopoly in markets. Therefore, this case emphasizes the need to have distinctiveness of the colour, consumer recognition and also long-standing use for registering colour marks.
Additionally, there are more case laws surrounding the controversy of colour trademarks. In Libertel Groep BV v. Benelux-Merkenbureau (2003), the European Court of Justice held that a single colour could be regarded as a trademark only if it is presented with accuracy and has distinguished features.[12] However, in a similar case of In re Owens-Corning Fiberglas Corp. (1985), the US Court of Appeals granted the pink colour of fiberglass insulation exclusive protection as a trademark.[13] It was backed by a lot of evidence and also had strong consumer association with the brand.
POLICY CONCERNS AND LEGAL CHALLENGES
Despite the increased awareness of the trademarks of colour, statutory protection has significant legal problems. In litigation there are two main doctrines that are repeated: Functionality Doctrine and Colour Depletion Theory.
The functionality doctrine denies the conferral of trademark protection in attributes that undertake a utilitarian role instead of a branding role.[14] In case a colour has an effect of improving product performance, safety or cost efficiency, exclusive rights may prevent competition in the market. In line with this, the courts require proof that the colour is used solely in identification of the source.
Another factor is the colour depletion theory which argues that allowing corporations to monopolize color can gradually drain the available spectrum to be used by other competitors.[15] Since the number of unique colors is limited in nature, the open protection of the trademarks can create obstacles for the entry of new companies.
As a result of this, courts impose high evidentiary standards before they grant protection to colour trademarks. The corporations have to demonstrate the evidence of indefinite use, widespread advertising anticipating the colour, surveys used by consumers, which establish the recognition, and a clear graphic depiction of the colour mark. Such precautions ensure that colour marks can only be safeguarded when the hue proves to be a unique sign of commercial source.
CONCLUSION
The rise of colours as trademarks is significantly evolving the importance of branding in modern businesses. Colours have now surpassed the line of aesthetic value and come out as an important element of brand identification. However, trademark laws should try to balance out the two conflicting poles – safeguarding distinctive brand names while maintaining healthy competition in the market. The cases of Christian Louboutin and Cadbury Chocolates proves that courts are well-aware of the commercial importance of colours. They conduct an evidentiary analysis of the whole scenario, considering consumer choices, market statistics, long-term benefits and fair market competition.
Colour trademarks may continue to hold a large niche in intellectual property law as the use of visual branding techniques in businesses increases. The dilemma of the court and policymakers is to make sure that this type of protection is limited to a narrow scope so that unfair monopolization is avoided and at the same time the authentic brand identity is preserved.
Author(s) Name: Kanu Priya & Akshat Kumar (National University of Study and research in Law, Ranchi & National University of Study and research in Law, Ranchi)
References:
[1] Graeme B Dinwoodie and Mark D Janis, Trademark Law and Theory: A Handbook of Contemporary Research (Edward Elgar 2008).
[2] Stacey L Dogan and Mark A Lemley, ‘Grounding Trademark Law Through Trademark Use’ (2007) 92 lowa Law Review 1669.
[3] Dev S Gangjee, ‘Non-Conventional Trademarks in India’ (2012) 22 National Law School of India Review 67.
[4] Trade Marks Act 1999, s 2(1)(zb).
[5] Wal-Mart Stores Inc v Samara Brothers Inc 529 US 205 (2000).
[6] Qualitex Co v Jacobson Products Co Inc 514 US 159 (1995).
[7] Satyendra Singh, ‘Impact of Colour on Marketing’ (2006) 44 Management Decision 783.
[8] Christian Louboutin SA v Yves Saint Laurent America Holding Inc 696 F 3d 206 (2d Cir 2012).
[9] ibid.
[10] Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174.
[11] Société des Produits Nestlé SA v Cadbury UK Ltd [2017] UKSC 21.
[12] Libertel Groep BV v Benelux-Merkenbureau (C-104/01) [2003] ECR I-3793.
[13] In re Owens-Corning Fiberglas Corp 774 F 2d 1116 (Fed Cir 1985).
[14] TrafFix Devices Inc v Marketing Displays Inc 532 US 23 (2001).
[15] Libertel Groep BV v Benelux-Merkenbureau (n 12).
