This Article is written by Avinash Bhargav ( National Law Institute University (NLIU) Bhopal)
In this article, I discussed whether a company or person can claim to have a copyright for a color pattern or not.
It was once accepted that color alone could not be registered as a trademark in the United States. The case law embodying this position (the mere color rule), was recast with the decision of the case of re Owens-Corning Fiberglas Corp. This article examines the process of creating protectible color trademarks by reviewing the Lanham Act, the mere color rule, the secondary meaning exception, the Owens-Corning Fiberglas decision and subsequent case law.
Color branding and trademark right
An individual cannot just own a color. The color of a brand is totally different from a color trademark. A company cannot register a color in its own name. But A company can own a certain pattern of a particular color like McDonald does not own the red color but it does own the pattern or the shape in that red color and hence no one can copy it at all.
The TM mark and ® marks mean that the company has claimed rights to the image (the symbol or word or combination of both) that represents the company. The TM mark can be used on any design that you wish to designate as a trademark. The registered trademark symbol (®) is a symbol that provides notice that the preceding word or symbol is a trademark or service mark that has been registered with a national trademark office. Copyright (the © mark) is different. Copyright is for the original author or creator of any creative work like writing, images, music, software, etc and the creator have the sole right to distribute, publish, sell or copy that work for a set period of time. All the images and articles in the color matters website are protected by copyright.
Section 10 of the Trade Marks Act states that a trademark can be limited to a particular color or combinations of colors. However, such limitation as to color will only be allowed in determining the distinctive character of the mark. However, if no color has been specifically claimed, then it shall be deemed to be registered for all colors.
Distinctive character cases in India
If a mark is being applied for registration for a combination of colors and that is the distinctive feature of the mark, then this should be mentioned at the time of the filing. However, when a particular color is claimed, an applicant is required to submit evidence to show that the said color combination or color that has been claimed is solely associated with the applicant or exclusively designates their goods. If the color that is applied is common to trade then it might be difficult to claim distinctiveness over the color. For example, Red as a trademark for a drink may be distinctive but when the color red is claimed for packaging of those bottles would be non-distinctive.
Cadbury was successful in stalking its claim against Nestle to register its color purple on the whole of the surface of the chocolate bar, eating chocolate and drinking chocolate. The ruling stated that the color had acquired a distinctive character and people associate the color with Cadbury chocolates. Evidence, in the form of a public survey, proved that the public associated the color with Cadbury chocolate.
How color matters?
Colour matters a lot in day to day lives. As color can make your brands value more or less. Brands and color are linked together as color offers a distinct method of conveying the message to people. It Offers people to remember the company by its color as colors are easy to remember. Colors should be used in one’s mark so that people can easily remember it. Colour does matter when it comes to branding and marketing.
Some companies have trademarked color on the basis of the function that they serve to the society. And even courts have admitted that certain colors are trademarked only if they serve some purpose. Conor does matter to companies and if their competition tries to copy it, legally it can be stopped. For example, if a red colored M is taken by a third person for the company, MacDonald can stop that person legally as it is likely to cause confusion in the mind of people. Generally speaking, it is very important to keep in mind that the trademark should not cause confusion in the mind of the public. It should be different and the color should not match the existing trademark. Some examples are given below:
Case study – Tiffany & Co.
Colour trademark is different when the color itself is a brand. Like a well-known company Tiffany & Co. Where the owner of the company Charles Lewis Tiffany chose the color for the cover of Blue Book. Colour Tiffany Blue was later used on everything from shopping bags and jewelry boxes to any advertising for the company. Colour Trademarks can only be available for certain pattern and shapes or for certain purpose. Like in the case of Tiffany, the color is only protected for the bags, boxes or advertisement from other jewelers.
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. Robin’s egg blue can be used by anyone and anywhere. An individual can use this color on his walls legally. This color for Tiffany is only protected from the other jewelers where confusion can be created by others on a brand.
In another case of Cadbury. When you see a chocolate candy in the purple wrapper, you know its Cadbury. By seeing if customers are able to identify the product, then the product’s color matters for its reputation. Cadbury Purple is protected by trademark only for chocolate products. If any other company makes a chocolate with the purple wrapper, then Cadbury can stop that company from making it legal. It is very important to understand the role of color in one’s company.
Deere & companies have a distinct color trademark. Its trademark consists of leaping deer symbol, name and yellow and green color scheme. This company provides outdoor power equipment. The company owns the rights to all three of these and it prohibits any other such machinery maker from using them separately or combined. The color yellow and green cannot be used together by any other machinery maker.
The Company CAT prohibits from using its distinct Caterpillar Yellow without its permission. However, Yellow is a functional color for road construction, so Cat cannot prevent other companies from manufacturing yellow colored equipment.
Manufacturing giant 3M has trademarked the color canary yellow used on its famous Post-It Notes. They even sued Microsoft for infringement when it created a digital version of a sticky note product in the same color.
Red soled shoes
Christian Louboutin shoes are all known for red soles. They are popular for only one this and are not cheap. Recently, a Dispute arose when Yves St. Laurent began selling shoes with red soles. Louboutin sues Yves in 2008 who had already trademarked the red sole. The court held that Louboutin’s red sole should not be doubted as it fulfilled the fundamental purpose of the trademark and the colored soles have been used successfully as the trademark. The color can be trademarked only if they serve the purpose to identify the source of a product. But can red sole serve any other function than the source of a product? This question was put up in the case. Louboutin’s stated that red serves ‘energy’ and was ‘sexy’ and ‘engaging’. So while the court reasoning, in this case, makes some sense- a color for shoe soles is not going to foster a competitive marketplace- It tends to encourage greater use of visible trademarks.
Registration Of Color Trademark in India
In order to obtain a color trademark in India, it is important that the color or combination of color distinguish the good and services of one party from the other party. Also, the color or combination of color should be used in a certain pattern or it should serve some basic purpose. For example, if the color pattern is associated with the packaging and it is known to the society that the color pattern is associated with the respected company, then the color trademark can be obtained.
But if the color is not used in any pattern or does not serve a purpose, then it is difficult to obtain the trademark as it is likely to cause confusion. It is likely to be rejected by the examining officer. Colour trademark can be of two types single color or a combination of colors trademark.
A single-color trademark can be obtained only if the color is unusual or different and is recognized by the customers. It should serve some reputation in the society and it should be well known for that class of goods or services. However, single-colour marks can be obtained if the owner can prove its existence in society or proves that it is a well-known mark. But the mark can be rejected if the mark does not stand as a well-known mark or have an unusual pattern in it.
The combination of color can be registered if they are unique in nature and the mark is used to distinguish the goods and services from others. If a company have a color pattern that makes it distinct from the competition it can be registered. It is difficult to obtain a trademark if the combination of color applied is simply from a certain purpose and the color combination is not recognized in society. For example, a combination of color like white and yellow cannot be registered by any toothpaste company as every toothpaste company uses these colors.
Section 10 of the Trade Marks Act states that a trademark can be limited to a particular color or combinations of colors. If a mark is well known and the color plays a vital role in that company then it can be registered. If the mark is recognized by the people by that color and the value of the mark is zero without that color then it can be registered under section 10 of Trademarks Acts.
In the United States, patterns are generally not eligible for copyright protection as copyright does not apply to methods or “procedures for doing, making, or building things.” Additionally, an item created from a pattern also lacks copyright protection if it is considered to be a functional object. Under the Useful Article doctrine in US copyright law, if an object has a practical or useful function, copyright protection applies only to the original, creative elements “that can be identified separately from the utilitarian aspects of an object”, but does not extend to the underlying design of the functional object.
Here, while the drawing of the dress may be considered a creative expression of the author and therefore eligible for copyright protection, the pattern instructions and any dress made from the pattern would not be protected by copyright.
In the absence of copyright protection for functional objects, a user of a pattern may be able to use whatever she makes from that pattern for any purpose, including selling the items. However, accompanying materials included with the pattern, such as images, may be eligible for copyright protection (see image above). The United States Copyright Office provides the example that while a drawing or photo of a dress may be copyrighted, that does not give the artist the exclusive right to make a dress of that particular design.
When it comes to what can be done with the final product made from a pattern, there is a conflict between the desires of those who want to use the pattern and those who designed the pattern. With no relevant case law available as a guide, there really are no definitive answers. Despite the lack of legal precedent, those wanting to use patterns and the items made from those patterns should be aware of how they can legally make use of these materials. In the same vein, designers should understand to what extent and how they can protect their work.
The view commonly held by designers is relatively simple: follow the restrictions set in the pattern’s disclaimer. For example, if a knitting pattern you downloaded was accompanied by a disclaimer that read “personal, non-commercial use only” you could make as many items as you wanted using that pattern, but you could not sell any of them because that would constitute a non-personal, commercial use. However, when designers place notices on their patterns, they may be exaggerating copyright protections and licenses. But it is important to remember that even if copyright protection is not available, a user may be agreeing to a license that restricts the way he may use the pattern when he consents to the terms and conditions set by the designer.
Pattern users should be aware of what they are agreeing to when purchasing or downloading a pattern. By clicking a box that reads, “I agree to the terms & conditions”, a user may be entering into a legally binding agreement that can restrict what she may do with the pattern. Under US law, terms that parties consent to in a contract can trump copyright law, leaving designers with possible legal recourse for misuse of a pattern.
Seeking clear legislative guidance and wanting protection for their work, the fashion industry lobbied Congress to create legislation that would protect unique designs. First introduced in 2007, the Innovate Design Protection and Piracy Prohibition Act (IDPPPA) sought to protect designs for a period of three years if registered with the US Copyright Office within three months of being made available to the public. While similar legislation to limit design piracy has been enacted in Europe, India and Japan, legislative progress of the IDPPPA has stalled as of 2014, and patterns are still generally not copyrightable in the United States.
Unless and until moves are made in Congress, answers about copyright protection and designs still lie in a gray area. Whether you are a designer or a user of patterns, it is important to remain informed about your legal rights and understand the possible ramifications that can come along with something as simple as a pattern.
 But see, Clifton Mfg. Co. v. Crawford-Austin Mfg. Co., 12 SW2d 1098 (Tex Civ App Ct 1929) (The reddish brown coloring for tents and tarpaulins was granted trademark protection.); Yellow Cab Transit Co. v. Louisville Taxicab & Transfer Co., 147 F2d 407, 64 USPQ 348 (CA 6 1945) (The yellow color of plaintiff’s taxicabs was protected under
principles of unfair competition.).
 See Fleishmann v. Starkey, 25 F 127, 128 (CC RI 1902) (“The yellow coloring of a label used on a package of compressed yeast, cannot be the subject matter of a trademark.”); Samson Cordage Works v. Puritan Cordate Mills, 211 F 603, 607 (CA 6 1914) (The description of a trademark for wire rope consisting of “a red or other distinctively colored streak applied to or woven in a wire rope” is too indefinite to be the subject of registration under the Act of March 3, 1881.);
 774 F2d 1116, 227 USPQ 417 (CAFC 1985), revg 221 USPQ 1195 (TTAB 1984),