A colour trademark is different. In this case, the colour is the brand. The use of the colour in a market sector is protected by trademark. For example, when you see chocolate candy in a purple wrapper, you know it’s Cadbury: when you see a turquoise box for jewellery, you know it’s from Tiffany & Co.
However, Cadbury’s purple is protected by trademark only for chocolate products. Anyone else can use the colour purple.
Until the 1980s, U.S. law refused to recognize a single colour as a brand. However, colour combinations, had long been protectable. This changed when Owens-Corning launched the “Think Pink” campaign for its fiberglass building insulation. In 1985, a U.S. Court of Appeals in Washington ruled that the company had the right to prevent others from using pink for insulation.
Years later, in another case, the U.S. Supreme Court reiterated that a single colour can indeed be a brand, so long as the public strongly associates the colour and the specific product and that the colour is in no way functional.
Pink insulation is a good example of a colour that is protected by trademark. When consumers see pink insulation products, they know it’s Owens-Corning. The colour pink doesn’t symbolize anything in home construction. In fact, it’s not even a very masculine colour.
Tiffany Blue is another example of a colour trademark. It’s important to understand that they only own that blue in situations where it could be confused with their products. Tiffany only owns “robin’s egg blue” for its boxes and bags.
One of the basic principles of colour trademark laws in the US is that a functional colour cannot be trademarked. In other words, if a company makes lawn mowers, they can’t “own” green because green is the colour of lawns and is therefore a functional colour.
(More trademark colour myth: John Deere does not own green. Barbie does not own pink; Mattel does not owns G.I. Joe green.)
The issue of colour rights surfaced in a recent dispute between two well-known design houses — Christian Louboutin and Yves Saint Laurent. Louboutin has used a red lacquered outsole on its highly priced women’s shoes since 1992 and is suing for trademark protection. In the meantime, the trend is growing fast enough to make paint sales spike.
US-based pharma AstraZeneca had, not so long ago, filed a suit before a Delaware court against the purple colour of the generic version of AstraZenca’s antacid pill, Nexium, being sold by Dr. Reddy’s Laboratories in the US. AstraZeneca alleged that the shade of purple used was similar to the shade of the original pills, effectively infringing on their trademark for their purple pills. The Court granted a temporary injunction in favour of AstraZeneca, imposing a temporary ban on the sale of Dr. Reddy’s generic pills.
The general trend in foreign jurisdictions is to disallow the registration of single colour marks. In the UK for instance, although the House of Lords in the Smith Kline case recognized the external appearance of the capsule as a colour mark, pharmaceutical trade dresses have repeatedly fail to fulfil the requirements of the two tests.
In India too, colour marks aren’t easily registrable – and if you’re looking to register a single colour as a colour mark, well, your job gets harder. While the Trade Marks Act does not expressly prohibit the registration of single colour marks, establishing distinctiveness in a single colour is no easy feat unless the colour, by virtue of a long standing association with a particular mark, has come to represent the source/origin of the product, whose unique distinctiveness enables easy identification of the product from other products in the same class of goods.
Courts also tend to be apprehensive of allowing colour mark registration because they fear the depletion of the rather limited set of colours currently recognized – and in India, this isn’t necessarily restricted only to pharmaceuticals. Although Cadbury for instance, obtained a favourable decision in Nestle S.A v. Cadbury UK that allowed it register the royal purple colour famously identified with its ‘Dairy Milk’ chocolate, as a colour mark –an application for its registration before the Trademark Registry was rejected. While in Colgate Palmolive Company v Anchor Health and Beauty Care Pvt Ltd the Delhi HC acknowledged that even a single colour may be registered as a mark, the Court in Cipla Limited vs M.K. Pharmaceuticals, made a diametrically opposite assertion that monopoly over colours cannot be claimed. On the question of colour marks for pharmaceuticals, the Court stated –
“The medicines are not bought by colours by the customers. There are thousand types of tablets available with Chemist for different ailments. No one goes to a chemist and asks for red, blue, orange, peach or white colour of tablets. All medicines are purchased at the advice of Doctors and they are sold on prescription. Even those tablets readily available without prescription, are known by their names……….The distinctiveness of the medicines is in the name and not in the colour and shape”.
The recently emerging colour branding strategy adopted by pharma companies, besides possessing medical relevance, looks like a very smart move in an increasingly competitive market to ensure that the medication’s curative value isn’t the only factor that sustains its appeal. The question is if AstraZeneca can actually produce evidence to meet the standards of the two tests discussed earlier, will its action for infringement against Dr. Reddy’s actually succeed?
Only time will tell. Meanwhile, we hear that in an effort to sidestep the implications of the ban, Dr. Reddy’s has notified the Delware Court that it plans on switching from purple to blue for its generic Nexium pills.
Imitation might be the sincerest form of flattery, but people sometimes forget that it can lead to an expensive lawsuit.
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