Author: AAK

AN ANALYSIS SUGGESTING A ROADBLOCK IN IP THROUGH THE LENS OF COLOUR DEPLETION

-AAK

BRICOLAGE

Historically trademarks have been limited to transcribable visual marks (like words, logos, and other traditional symbols for marketing), however, there has been a trend in recent years toward expanding trademark protection to cover less conventional, or more sensual, marks that could be experienced by people naturally (like sound, scent, or colour). Colour trademarks in particular have become an increasingly important and contentious area of intellectual property law owing to this very trend with trademarking of single-tone colours emerging as a powerful branding strategy. By claiming exclusive rights to particular colours, brands seek to differentiate themselves in crowded marketplaces with a purchased prestigious appeal but the granting of such exclusivity for single colours raises complex legal, practical, and theoretical issues, if not an overwhelming fear of inevitable saturation. This post will examine the current state of colour trademarks globally, with a particular focus on the United States (USA), and explore the relevance of Colour Depletion Theory in shaping future policy and practice in the continuously developing field of intellectual property. The reason for choosing USA as the target nation of this analysis is the abundance of readily available data (most relevant precedents) and the nation’s stronghold on shaping global IP norms through multi-lateral treaties, customary laws, and its landmark decisions.

Keywords: Colour Depletion, Secondary Meaning, Aesthetic Functionality, Colour Combination, Emotional Symbolism

EPHEMERAL ART

The watershed moment for colour trademarks came with the 1995 USSC decision in Qualitex Co. v. Jacobson Products Co.[1], which held that colour alone could serve as a trademark as long as it had acquired a secondary meaning and was non-functional. Simply put. “Secondary meaning” refers to the ability of a general consumer to recognise, if not recall, a brand’s products through a colour alone. Akin to slogans, if a consumer is able to associate a specific colour with a brand or one of its products then it is said that the colour has acquired a secondary meaning in the context of being associated exclusively with that brand aesthetically. The decision in Qualitex was revolutionary as it allowed unique colours to be protected as trademarks so long as the colour in question did not serve any aesthetic or proper functionality that would hinder competitors or give an unfair advantage to the trademark holder. It opened the door for brands to claim exclusive rights to particular colours within their industries, and given the competitive nature of marketing, brands capitalised on this newly legal platform for distinct identity/s instantaneously. Established brands started protecting whatever credible colour distinction any of their product line/s had while new brands also emerged imbuing their products with a specific or unorthodox colour scheme from the very beginning. “Aesthetic functionality” quickly became a doctrine for colour marks wherein the utilitarian aspects (functional scientific use) of a colour scheme weighed against its trademark protectability. However, this lucrative doctrine was purposefully restricted to mostly the use of black or white colour wherein the logistical use of their light absorption functionality becomes the relevant aspect; instead of enforcing it for the entire colour spectrum.

1. The colour must have acquired secondary meaning
2. The colour cannot be functional for the product or service.
3. The colour must not conflict with existing marks.

As colour trademarks have proliferated, they have become an important part of many companies’/ brands’ marketing repertoire. However, they have also sparked debate and controversy given the infringement this colour protection has on other people’s use of the colour.

COMPOSITION

The expansion of trademark protection to single colours has not been without controversy. One of the main arguments against broad protection for colour marks is this theory which posits that there are a limited number of attractive or commercially viable colours and granting exclusive rights to any one company/ brand could eventually deplete the available options for competitors or new brands to use. Proponents argue that this is especially problematic in industries where colour plays a functional role or where consumer colour preferences are limited while critics contend that the vast range of colour shades makes depletion unlikely. Regardless, this theory remains a key consideration in the ongoing debate around colour trademarks as any remote, even singular, possibility of colour use being restricted would hinder public choice and competition in the marketplace.

The doctrine of functionality prohibits trademark protection for features that are essential to a product’s use or purpose, and determining when a colour crosses from aesthetic to functional can be complex. Unlike words or logos, colours exist on a spectrum wherein they blend with each other very fluidly. Determining when one protected colour bleeds into another can be challenging not only for courts and trademark offices but also for experts in a field as once a binding precedent has been established to restrict a shade of colour, let’s say red with the Louboutin case, it would create a domino effect of other shades in that family being easily confused as the same specific shade and the brand filing frivolous lawsuits against unsuspecting competitors or artists in the garb of protecting their brand image. This coupled with the fact that colours are very much associated with human emotion and are arguably the most effective branding tool creates the possibility of such frivolous protections hindering creative use or even public service announcements. The colour red itself, a shade of which is now protected, holds both positive and negative emotions as it can represent feelings like energy, passion, love, power, or seduction and on the flip side also represent war, conflict, anger, and stress[4]. The same colour is crucial in promoting blood donation drives and showing urgency at a time of crisis. Therefore, restricting the same abilities of marketing to a handful of private companies/ brands would adversely impact the greater public good. While it may seem like a trivial and distant issue, it is not inevitable. Again brands recognise the value these colours hold; and according to a colour study[5], around 29% of the biggest brands in the world use the colour red in some part of their logo.

Moreover, colour associations and meanings can vary significantly between cultures. This raises questions about the applicability of colour trademark protection across global markets as a colour like saffron may just be a meaningless fashion shade in Western markets but holds a profound religious and spiritual meaning in the Eastern market. Granting global colour protection, or well-known status as recognised under Indian jurisprudence, to a Western brand by a US court for its prolonged use of the colour saffron with its products would not be granted any protection under the Indian trademark regime.

NARRATIVE

Colour depletion theory offers a nuanced perspective on these debates and would help shape the framework for future IP policies. Some prominent examples like Tiffany & Co. Robin’s egg blue, UPS brown, T-Mobile’s magenta, and Christian Louboutin’s red soles for women’s shoes have become iconic and successful colour trademarks in the global marketplace. It is this colour depletion generalisation which is a cause for concern in the long run. These reputed mark holders show not only the level of recognition required to be granted a colour mark but also the classes of brands and industries that are attempting to capitalize on this medium of brand diversity. Consumer-centric brands have an inherent focus on standing out from the competition and will naturally seek to claim exclusive rights over eye-catching colours that visually differentiate their generic products from others in the market. Empirical research conducted on sector-wise colour marks protected in the USA better portrays the rate at which the implementation of these single-colour trademarks would hamper industries. Evidence presented by Xiaoren Wang in her “USPTO single-colour trademarks study” suggests that colour depletion is a real and growing issue that warrants serious consideration in IP law and policy[6]. Data from her research of 858 single-colour trademarks in the USPTO database indicates the concentration of registrations in certain classes and colours which further negate the improbable notion people have of colour depletion. Roughly 10 classes/ industries stand out of a total of 45 in the number of trademarks granted and 4 of these industries have already crossed the 30% mark. Among these, certain industries such as electric products (Class 9) and medical instruments (Class 10) are experiencing more rapid depletion as 41% of the colour space in Class 9 and 40% in Class 10 had already been claimed as trademarks by 2019. Since the protection granted is not uniform across all sectors or classes, there will be an imbalance between a frugal and enriched state.

Moreover, the research found that many colour trademarks are concentrated in particular hue segments (red, orange, yellow, and green) in certain classes. This uneven distribution of primary colours further exacerbates the complex issue of colour depletion by proving that there are popular colour ranges which are being targeted for their psychological and logistical merits thus creating an unnecessary if not counter-intuitive frenzy for opportunistic or even genuine but ultimately profit-focussed brands. Claiming a right over the primary/ trendy colours would create a marketing oligopoly for established businesses thus hindering future businesses from a level playing field. Leveraging insights from colour depletion theory and related research would enable lawmakers and IP academics to craft better policies if not develop a more efficient system that preserves the benefits of such unconventional trademark protection while mitigating their potential drawbacks.

PANORAMA

These findings suggest that while colour depletion may not be an immediate crisis across all sectors, it is a legitimate concern that warrants attention as saturation of a particular colour spectrum or even a tint would cause a legal block and have large-scale economic ramifications at least in the American framework[7]. The evolution of colour trademark protection should be characterized by a more nuanced, data-driven approach that addresses the growing concerns of colour depletion. Trademark offices and legal systems need to implement multi-faceted strategies that balance brand identity protection with fair market competition. The following strategies could be considered by the United States Patents and Trademarks Office (USPTO) and federal courts to achieve balance with their framework: –

Foremost, trademark examination processes must become more rigorous, particularly in industries showing signs of advanced colour space saturation. Sophisticated colour space analysis tools will be developed to map and assess how proposed colour marks fit within existing trademark landscapes. This technological approach will enable a more precise evaluation of colour trademark applications, taking into account the concentration of colours in specific industry segments. Jurisdictions may also move towards more dynamic and flexible protection mechanisms. This could include implementing periodic review processes for existing colour trademarks, introducing sunset clauses that prevent indefinite monopolization of colours, and developing industry-specific guidelines that recognize the varying colour needs across different sectors. The goal will be to create a more adaptive system that can respond to the evolving challenges of colour trademark protection. Any positive outcome/s would result in international harmonization efforts as countries already recognize the global implications of colour depletion. This may result in more standardized approaches to colour trademark registration with greater emphasis on understanding cultural variations in colour perception and commercial use. The ultimate aim will be to create a balanced global framework that protects brand identities while preserving market accessibility for new and emerging businesses; or getting rid of single-tone colour protection in its entirety.

ALL-OVER SPACE

The current state of colour trademarks reflects a complex balancing act between protecting brand identity and ensuring fair competition. Common law jurisdictions around the world (India and USA analysed supra) have opted to grant unconventional marks for basic standalone identifiers/ features like single-tone colours in an effort to protect brand identity and commercial interests of reputed brands. While this approach is beneficial in preserving established brands’ reputation, boosts consumer goodwill, and furthers the stronghold of mark-holders’ rights; the risk of potential colour depletion and anti-competitive effects necessitates a more nuanced policy approach. Colour depletion theory provides valuable insights into the real-world impacts of colour trademark proliferation and offers a framework for developing more nuanced policies. Moving forward, policymakers, courts, and trademark offices will need to grapple with the tensions inherent in restricting the use of single colours. They must weigh the benefits of strong brand protection against the risks of colour depletion and market distortion[8]. As the global marketplace continues to evolve and the importance of visual branding grows, the debate over colour trademarks is likely to remain vibrant and consequential. Striking the right balance will require ongoing dialogue between state officials, legal experts, brand owners, consumers, and researchers from all relevant fields ranging from etymology to biochemistry.

While the “depletion doomsday” may not arrive as suddenly or dramatically as some suggest, the empirical evidence does show that colour depletion is a real and growing concern. It will most likely lead to a gradual evolution of IP laws and practices related to colour trademarks. The challenge for policymakers and courts will be to strike a balance between protecting valuable brand identities and preserving a vibrant, competitive marketplace with sufficient creative options for new entrants. As this issue continues to develop, we can expect ongoing debates and policy discussions with the colour depletion theory, now backed by empirical data, likely to play a significant role in shaping the future landscape of trademark law and practice around the world.

REFERENCES

1. Sylvia Zaich, Seeing Red, Spending Green: the Costly Process of Registering and Defending Color Trademarks – Note by Lauren Traina – Southern California Law Review, Southern California Law Review (2014), https://southerncalifornialawreview.com/2014/07/01/seeing-red-spending-green-the-costly-process-of-registering-and-defending-color-trademarks-note-by-lauren-traina/ (last visited Sep 27, 2024).
2. Nupur Thapliyal, Delhi High Court Declares “Boroline” As Well Known Trademark, Restrains Use Of “Borobeauty,” Livelaw.in (2024), https://www.livelaw.in/high-court/delhi-high-court/delhi-high-court-declares-boroline-as-well-known-trademark-restrains-use-of-borobeauty-267724?fromIpLogin=55971.11146254163.
3. Jill Morton, Why Color Matters, COLORCOM (2005), http://www.colorcom.com/whycolor.html.
4. “The Ultimate List Of Art Words → Rebecca Taylor” (Rebecca Taylor April 21, 2022) <https://rebecca-taylor.com/blog/art-words/#A>

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[1] Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995)

[2] Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., No. 11-3303 (2d Cir. 2013), Justia Law (2024), https://law.justia.com/cases/federal/appellate-courts/ca2/11-3303/11-3303-2013-03-08.html (last visited Nov 11, 2024).

[3] Inwood Laboratories v. Ives Laboratories, 456 U.S. 844 (1982)

[4] Mary Kate Miller, How to Choose the Right Color for Your Logo: The Ultimate Cheat Sheet, Foundr (2021), https://foundr.com/articles/building-a-business/best-logo-colors.

[5] Mary Kate Miller, How to Choose the Right Color for Your Logo: The Ultimate Cheat Sheet, Foundr (2021), https://foundr.com/articles/building-a-business/best-logo-colors.

[6] Wang, Xiaoren, Should We Worry about Color Depletion? An Empirical Study of USPTO Single-color Trademark Registrations (January 18, 2022). Available at SSRN: https://ssrn.com/abstract=4011677 or http://dx.doi.org/10.2139/ssrn.4011677

[7] Joshua Marshall, Colour trademarks revisited: use and infringement, Journal of Intellectual Property Law & Practice, Volume 14, Issue 5, May 2019, Pages 401–406, https://doi.org/10.1093/jiplp/jpz018

[8] Felix S. Cohen, Transcendental Nonsense and the Functional Approach, 35 Columbia Law Review 809 (1935)