[This post is authored by SpicyIP Intern Samridhi Chugh. Samridhi is a final-year student at the Campus Law Centre, Faculty of Law, University of Delhi, and a graduate in Journalism from Lady Shri Ram College for Women. With a passion for the dynamic intersection of law, media and technology, she is particularly interested in exploring intellectual property and tech policy. Her previous posts can be accessed here.]
In the foreground of today’s fiercely competitive offline and digital marketplaces, where brands engage in neck-to-neck battles for visibility, the role of colours in trademarks has become a focal point of legal discourse. Colours help enhance mark recognition, offering a viable medium for brands to stand out amidst a congested flock and communicate their own unique identities to target consumers. As a result, leading brands often find themselves embroiled in extended legal strifes in pursuit of the widest possible protection for their registrations.
Registering trademarks in grayscale (black-and-white) is a typical legal strategy (as suggested here, here, here, here and here, among others) adopted by enterprises to secure broader legal protection against potential instances of infringement. When a trademark is registered in a specific colour or colour scheme, its protection is limited to that scheme. On the other hand, it is generally understood globally (more on this below) that when registered in the black-and-white scheme, the protection is deemed to have extended to all colours. This post explores the implications of such omnibus protections both in India and abroad and delineates the recent shifts in global jurisprudence recognising the need for a balanced approach.
The Roots of Overbroad Protection in India
From the decision in Colgate Palmolive v. Mr. Patel & Ors. (2005), where the Delhi High Court acknowledged the red-and-white combination as a part of its distinctive trade dress, to Christian Louboutin’s (2018) fallen battle for trademarking the red colour in its shoe soles, colour as an element has been at the centre of some of the most eye-catching trademark disputes in India. In the past, SpicyIP bloggers (here, here, and here) have also delivered their critical commentaries on the evolving focus of the law on colour. Courts, too, have traditionally endeavoured to strike a delicate balance between recognising the role of colours in enhancing the mark’s distinctiveness and preventing anti-competitive monopolies over the use of singular colours versus colour combinations. However, the ad hoc balancing act becomes complicated when it comes to colour limitations, as specified at the time of registration.
Section 10 of the Trade Marks Act, 1999, provides for the registration of marks with or without limitation to specific colour combinations. Specifically, sub-section 2 states, “So far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours.” Further, point 5 of the Form TM-A, used to file trademark registration applications, clearly enunciates, “(b) In case of trademarks submitted in specific combination of colours other than black and white, it shall be presumed that the distinctiveness of the mark is claimed in that combination of colours and application will be considered accordingly.”
A combined reading of the two aforesaid provisions leads to a clear statutory interpretation that trademarks registered without colour limitations or in grayscale are protected across all colours, potentially granting the owner exclusive rights over every possible variation, even without the need to harbour distinctiveness.
The limitless contours of this protection were clearly affirmed by the Madras High Court in the case of R.Gopalakrishnan v. M/s. Venkateshwara Camphor Works (2000), wherein the appellant claimed trademark infringement due to the respondent’s similar packaging of camphor products. The Court held that since the appellant’s trademark was registered without colour limitations, it extended to all colours, making the respondent’s nearly identical packaging deceptive and infringing. Similarly, in ITC Limited v. Ganesh Flour Mills and Another, the Court dismissed the applicant/defendant’s claim that the respondent/plaintiff (ITC, herein) could not claim monopoly over the colour red or orange in their trade dress. It held it to be an admitted fact that ITC had registered their trade dress in black-and-white, therefore, effectively recognising its protection across the entire colour spectrum under Section 10.
The above principles were reiterated by the Delhi High Court in its decision in Armasuisse v. Deputy Registrar of Trademarks and Promoshirt SM S.A. (2023), in which it rejected a concession by the respondent to restrict their mark to black-and-white, finding that their continued use of a red-and-white version of the Swiss cross closely resembled Switzerland’s national emblem. The Court held that a trademark registered without colour limitation under Section 10(2) is deemed registered for all colours, including the red-and-white version. Therefore, it noted that the respondent’s intent to continue using the red-and-white version remained unaddressed.
Further, the use of the impugned “two feet” logo by the defendant in Social Work And Research Centre v. Barefoot College International (2023), was, in the Court’s own language, a case of “plain and simple infringement” even though the plaintiff’s logo was originally registered in monochrome. In a more recent decision in Swasth Digital Health Foundation v. Trademarks Registry (2024), the Madras High Court noted in a far-reaching observation that if an applicant registers a trademark without specifying a colour combination under Section 10(2), the trademark owner is later free to select any colour scheme for its use, including the colours of a national flag.
Threats of Colour Monopolisation
The above stance comes in stark contrast with the settled legal principle that there can be no monopoly over the use of a specific colour or colour combination in the absence of acquired distinctiveness, as crystallised by the Delhi High Court in Colgate Palmolive (mentioned earlier) and Cipla v. MK Pharmaceuticals (2007). By allowing enterprises to claim exclusive rights over any colour variation of their logo, notwithstanding the extent of use or consumer recognition, the law can be seen to grant an overreaching protection to grayscale marks and stifle fair competition.
This holds especially true in the case of corporations with pre-existing “well-known” marks which already enjoy privileges across classes of goods and services. In this case, the umbrella protection under black-and-white mark registrations could afford them a higher leeway to claim exclusivity in colour combinations, even in unrelated industries or with distinct logos. In this post, Prateek Surisetti highlighted similar concerns in the context of exclusive rights over single colour marks, focusing on the colour depletion theory, which argues that granting such rights could create monopolies over a spectrum of similar colours, thereby limiting the options available to competitors.
Proponents of the overly broad protection might claim that this ambit only goes so far in strengthening the existing trademark by safeguarding its various iterations from potential infringement. However, the contention fails to address that such a vague and expansive protection could lead to prolonged disputes between brands that use similar logos bonafidely and in the absence of any real risk of consumer confusion. In fact, allowing trademark owners to claim protection over unspecified colours may aggravate confusion, if any, by making it harder for consumers to distinguish the original brand from competitors with similar logos.
This overbroad legal framework, however, may have gradually begun to change. The Madras High Court in the case of NMJ v. M/S Sri Kaliswari Fireworks (2022), clarified the limits of protection under Section 10(2). The Court affirmed that when a trademark is registered in black-and-white, it is deemed to be protected for all colours. However, in this case, despite the plaintiff’s “COCK” mark for fireworks being registered in black-and-white, the Court rejected its claim against the defendant’s “DUCK” mark bearing any deceptive similarity. It was held that elements like the yellow background and concentric circles were common to the fireworks industry and could not be monopolised.
An Evolving Global Approach
As mentioned earlier, the general mass of legal advice across global jurisdictions is hinged on suggesting that clients get their marks registered in black-and-white to enhance the possibility of a flexible use and alteration in the future. For instance, in China, the primary consideration to register grayscale marks arises from Article 49 of the Trademark Law which makes it clear that any unauthorised change to the mark by the registrant makes the registration liable to be cancelled if it is not corrected within a stipulated time. For this reason, counsels seem to recommend registering marks without colour specifications.
In the USA, as per TMEP §807.07(a)(i), if a trademark includes colour as a distinctive element, the applicant must claim that colour as a feature and ensure the claim matches the drawing. Once submitted, applicants must ensure that the use conforms to the specifications for which the mark has been registered. Alternatively, a black-and-white version can be submitted if it does not materially alter the mark. Similar procedures are also followed in Canada, Australia and New Zealand.
However, the epithetical “black-and-white covers all” approach has gradually begun to change. In European Union member states, the issue of extensive versus specific protection to black-and-white form trademark registrations has been a subject of historically conflicting standpoints. To address persisting inconsistencies, the European Trade Mark and Design Network introduced the Common Communication on the Common Practice of the Scope of Protection of Black and White Marks in April 2014 which has been adopted by 24 European IP offices, excluding those in Sweden, Denmark and Norway. It was also adopted by Turkey in July 2014. The Practice primarily applies to figurative trademarks without colour specifications and does not extend to 3D trademarks.
In its clarificatory framework, the Practice establishes that a black-and-white or grayscale mark is not identical to the same mark in colour unless the colour differences are deemed “insignificant,” from the perspective of an average consumer. This follows the holdings in the Milanowek Cream Fudge ruling (2014), where the Court of Justice held that black-and-white trademarks do not automatically extend protection to all colours. Furthermore, it provides that a mark can be used in colour without altering its distinctiveness if the word/figurative elements remain unchanged, the contrast of shades is retained and colour is not a key distinctive element.
Although not without its limitations, such as the absence of binding authority, its narrow focus on certain types of marks and the ambiguity in determining what constitutes insignificant differences, the framework offers a path towards a more structured and transparent system. It can help steer the world in checking on the use of overbroad protections as a front to erect monopolies over common use elements like colours and imposing fetters against the otherwise legitimate, good-faith use of trademarks. Much like the decision in NMJ, evolving IP landscapes like India can certainly draw valuable insights to establish more concrete guidelines that help find a middle ground between the legitimate needs of trademark registrants and the broader interests of their commercial ecosystems.