Intellectual Property (IP) Issues in Augmented Reality (AR)

Augmented Reality (AR) and Virtual Reality (VR) technologies are growing rapidly and becoming more noticeable and shall be transformative to the way we learn, live, work, and play. Undoubtedly, both technologies bring a complete set of novel Intellectual Property (IP) issues for business companies, brands, individuals, courts, and IP practitioners. Therefore, it won’t be wrong to admit that many legal issues need to be addressed in these fields, and many more are yet to be explored as the two technologies evolve.

Sometimes, AR and VR are used in overlapping ways; however, the two terms present unique and different issues in the IP world. AR keeps the real world in the background and enhances it with digital features, thereby layering new strata of perception and supplementing one’s environment or reality with additional material. The digital features could be anything perceived by the five senses, i.e., vision, smell, taste, sound, or touch. On the other hand, VR refers to a way of generating realistic sounds, images, and other sensations leading people to the middle of an imaginary world. It is the primary technology of the metaverse.

A familiar example of AR is the game Pokemon Go, which created a nightmare concerning public safety since users went high and low searching for different Pokemon characters while walking and crossing busy city streets with their hands on their smartphones. Much more recent applications for AR run across various industries, including healthcare, travel, real estate, education, sports, entertainment, and potential applications are as unlimited as the human imagination.

With the rapid innovation of AR technology and its growing commercial use, there seem to be many potential IP issues arising in this field. Here in this article, we shall be discussing the IP issues that have already occurred or are likely to occur in the near future in the AR field.

Patents

In the AR field, patent litigation has already commenced for AR hardware and some applications or uses of AR. Since AR capabilities have been limited to gaming devices and mobile devices in recent years, patent litigation in the AR field has been a logical outgrowth of the patent wars consuming the mobile device market. Companies such as HTC, Sony, and Nintendo have already defended such lawsuits in the past. Furthermore, ‘virtual try-on,’ a category of promising AR applications allowing customers to use web cameras within the comfort of their homes to see how outfits, jewelry, and other accessories would look on them before purchasing, has already been suppressed as a consequence of a Patent Enforcement campaign initiated by the Non-Practicing Entity (NPE) Lennon Image Technologies.

In the AR field, however, more IP disputes are likely to occur concerning trademark, copyright, public display, and performance, where articulating and defending against infringement matters is always more art than science. We shall be discussing the same in the following segments.

Copyright

The copyright-related questions arise with the extent to which the content in the AR field shall be registrable. The quantum of the original expression essential to qualify a creative work for Copyright Protection is undoubtedly low. However, at least some creative content in the AR field shall be designed to mimic, recreate, or merge with the real physical surroundings to the extent that the same won’t be distinguishable as digital. It takes us to the judgment of Judge Gorsuch in Meshwerks, Inc. v. Toyota Motor Sales USA, Inc., wherein he held that a 3-D digital recreation of an actual Toyota vehicle purely recreated an already existing work in a new medium and therefore didn’t consist of any original expression that could obtain copyright protection. That said, solely artificial worlds won’t be denied copyright protection only because they are realistic.

Potential instances of Copyright Infringement shall be all around us as AR artists continue using the physical world as their digital palette. In the ongoing digital era, most AR apps work by identifying a 2D symbol or physical object and then animating that view before the user’s eyes to set an illusion that it has transformed into something else. The question in this scenario is whether this process infringes upon the right to create a derivative work of the physical object? The correct answer in most cases shall be ‘no,’ because even though it seems that the object has been modified – it hasn’t been. It is just an illusion created by overlaying a digital view atop a physical view. However, kindly note that developing the software necessary to cause the said illusion may require copying and then altering the physical work, which may amount to copyright infringement in some cases.

Public Display and Performance

In the AR field, questions of public display and performance can be raised too. For instance, copyright holders may argue by stating that depicting their creative works in AR form (if it seems as if they are in the public space) leads to their unauthorized public display. Also, many AR experiences shall bring about some pieces of content to be displayed or performed only in particular geographical locations, even though the content only truly appears on the user’s mobile device. The question in this aspect is whether such displays and performances can be said to be truly public in nature?

Trademarks

Issues concerning trademarks and unfair competition in the AR field shall be even more diverse. For instance, when virtual trademarks shall seem as if they are anywhere in the physical space, superimposed on whatever may already be there, ‘false connections’ are bound to come into the picture between the IP owner and the virtual advertiser. The same may, in turn, create confusion in the minds of the consumers concerning whether the physical business sponsors or promotes the virtual advertisement. On the other hand, the circumstances in which the ad gets displayed, then again, may eliminate any reasonable likelihood of confusion. In the AR apps today, a user is more likely than he might otherwise be to know who provides the content and understand why it is being displayed the way it is. As we proceed towards broader, more general-use AR platforms such as Facebook, ‘always on’ digital eyewear, or browser-based content, confusion in the minds of the consumers is bound to become more likely.

Bottom Line

The AR technology is likely to touch every aspect of our lives in the coming future and generate what may seem like a never-ending list of social, legal, and ethical challenges. As the AR ecosystem develops, we can expect to see substantial transactions and litigation since many companies shall then come forward to secure Intellectual Property Rights (IPRs) for their AR apps. Therefore, we can say in this aspect that the future may be many things but at least not boring. ✅ For more visit: https://www.kashishipr.com/

Overview of Patent Exploitation

A patent refers to a form of Intellectual Property (IP) granted over any method, process, device, or substance (after a successful Patent Application process) that is original, novel, industrially applicable, and involves an inventive step. Like trademarks, Patent Rights are also territorial, which implies that such exclusive rights are valid only in the country or region where the patent in question has been filed and granted, as per the law of that country or region. Patent holders own the exclusive right to exploit their patented inventions or innovations. This right can bring multiple benefits; however, it is not a guarantee of success. Nevertheless, we can say that a patent is a right to reap the rewards of your invention’s research and development process.

The questions of whether and how a patented invention can be exploited are not influenced by the patent alone. Other regulations, rules, laws, applicable legislation, and possibilities of technical implementation also impose certain limits. For instance, despite having Patent Protection, a substance must initially obtain approval for a medicine before the corresponding invention could be sold as a drug. In another scenario, it is possible for a patented invention to improve the functioning of some specific machine. Now, if that machine gets patented by others, their rights need to be observed well.

Kindly note that:

• A person owning the patent grant or another person (with authorization from the person owning the patent grant) holds the exclusive right to exploit the said patented invention.
• The exclusive right to exploit a patented invention extends only in the country or region where patent protection is granted to the owner. 

How to Exploit Your Patented Invention?

Without any second thoughts, patents always constitute an economic value. Exploiting this value or generating it lies in the hands of the patent owner.

• Exploit Your Patent Invention Commercially – The profits you make by selling your innovative services or patented products compensate for the time, effort, and cost you invested during the R&D stage of your invention.
• Let Others Exploit Your Patented Invention Commercially – There may a situation where an established firm, start-up, or person shows a commercial interest in your patented invention. As the owner of the patented invention, you can assign or license your patent rights.
• Assignment refers to the act of transferring, quite often by selling, your exclusive rights at a specific point in time. It implies that you can assign all your patent rights to some other individual or entity.

Let us consider an example to explain a crucial point concerning the patent assignment. If you own a patented invention in India, your patent rights extend everywhere across India; however, you may not want the other individual or entity to own the exclusive right to exploit your patent across all the Indian states and territories. You might be willing to keep the right to exploit your patented invention in some states and territories (for example – New Delhi, Maharashtra, Haryana, and Rajasthan) and only assign the rights to exploit the patented invention in the other states. Remember, once you assign your exclusive patent rights, you may be unable to get them back. If the patent assignment takes place, you must put it in writing and register it with the IP or Patent Office of the concerned nation.

On the other hand, if you receive the patent assignment, you must ensure that the assignment rights are defined well, described appropriately, and reflect the terms and conditions upon which you and the patent holder agreed (for instance, you are assigned the exclusive patent rights in West Bengal, Tamil Nadu, Uttar Pradesh, and not the other Indian states and territories). You must also ensure that such patent assignment is registered in the records of the IP or patent office of the concerned nation to avoid the risk of the patent assignment being invalid.

• The other mode to exploit your patented invention is licensing your patent rights. Patent licensing is different from patent assignment as the former allows another individual or entity to do specific acts only for a limited period. Upon the expiration of that period, the exclusive rights granted under a license revert to the patent owner. Patent licensing can be exclusive, i.e., only the individual or entity granted the license holds the right to do certain acts, or non-exclusive, i.e., the individual or entity granted the license, the owner of the patented invention, and whoever is in receipt of such a license own the rights to do certain acts.

Kindly note that patent licensing and assignment agreements with third parties should always be negotiated and drafted with utmost care.

Bottom Line

A patent can be a valuable asset and should be well protected. However, it is not always an easy task. If you wish to have a better understanding of your patent rights, including their use and exploitation in the Indian Subcontinent, our attorneys and experts would be happy to assist you. Feel free to contact us at kashishipr@kashishipr.com! ✅ For more visit: https://www.kashishipr.com/

Understanding Royalty-Free Music

Video creators can relate to the feeling of shooting impeccable videos, editing them to perfection, and then understanding that they still need terrific tracks to go with the said videos. As a video creator, you may hop onto your laptop, start searching for free music, and finally come across platforms or websites offering royalty-free music or music without copyright (copyright-free music). All the video creators understand well that royalty-free music is the way ahead when one wants to be legal, i.e., do things in an authorized manner; however, there are still many inaccurate facts circulating about royalty-free music. Here in this article, we shall attempt to explain the concept of royalty-free music and dismiss some of the most common misinterpretations.

What is Royalty-Free Music?

The term royalty-free music means that you won’t be required to pay the royalty fee when you license media or music. When you license via some royalty-free media company, the company is responsible for paying the royalties and not you, which helps you save money in the long run, specifically when you wish to secure the license of a song for a lifetime.

Can Royalty-Free Music be Used for Commercial Purposes?

The answer to the question mentioned above is ‘Yes.’ No matter what the commercial purpose is for which you need royalty-free music (be it corporate video ads, monetized YouTube videos, or film projects, to name a few), you can use it, but ensure licensing it in the first place.

A common misconception is that instrumental music lies in the public domain and doesn’t need to be licensed. Although many instrumental tracks are available and accessible via the public domain, most of them belong to their rightful copyright owners, including royalty-free companies. It implies that making commercial use of royalty-free instrumental tracks as well requires you to secure the licensing rights.

Do You Need to Pay an Amount for Royalty-Free Music?

Although the term ‘free’ exists in royalty-free music, it isn’t actually free. However, it is essential to note that licensing royalty-free music implies you are cutting out the excess licensing fees and the costs of paying royalties.

Without any doubt, terms like royalty-free music or copyright-free music can be misleading, specifically to new content creators who aren’t well-versed with the legal issues involved in using this kind of music in their videos.

Copyright-free music means that nobody actually holds the exclusive copyright to the said music, due to which no royalties must be paid. However, coming across music that belongs to absolutely nobody and has zero Copyright Protection is exceedingly rare.

Most of the music tracks you find will be copyrighted, including royalty-free music. And the thing that comes as a surprise is that royalties are still being paid, even on royalty-free music. All this sounds a bit weird, but the thing is that when you work with a royalty-free platform or website, you are purchasing the license to the track you want. In this scenario, you become the licensee, i.e., free to use the said track or music in your videos. However, the company you purchased the license from shall be paying the royalties to the composers. To be clear, the company from which you’ll be purchasing such tracks shall be responsible for paying the royalties on the same tracks to their music producers or songwriters. Kindly note that if the video is displayed on a broadcast network, the network shall pay royalties to the performance rights organizations, which are then distributed to the music rights holders. Therefore, it would be wise to say that there is nothing like royalty-free music, not at least in the grand scheme of things. It implies that you won’t be required to pay the royalties because the company shall be doing so.

Quick Rundown of Facts about Royalty-Free Music 

1. It isn’t cost-free– Most individuals believe that if a track has a royalty-free label, it’s cost-free. However, such is not the case. Think of it as a fat-free cookie, i.e., it is free of fat, not free of cost. You need to pay for the track to own the license corresponding to its use.
2. Royalty-free music and copyright-free music aren’t the same– There is a clear distinction between both the terms; royalty-free music has copyright, and copyright-free music is the one that has no copyright.
3. Royalty-free music isn’t stock music– Although most royalty-free tracks come from stock music libraries, the two aren’t synonymous. A stock music library offers music tracks already in stock, i.e., already made and ready to license for use. Remember, stock music isn’t always royalty-free.
4. Royalty-free music includes all genres and types – It isn’t restricted to background tunes and instrumental tracks. One can find every music type royalty-free.
5. Finding completely copyright-free music is hard – Copyright-free music is like a unicorn, i.e., extremely rare. Almost every other track has some copyright protection attached to it, even music with a Creative Commons license.
6. Not all licenses for royalty-free tracks are the same – It is imperative to note that every royalty-free music company operates and works differently. Hence, you must understand their licensing requirements, terms, and conditions before signing up with them. 👉 ✅  For view-source: https://www.kashishipr.com/

India – Liability of Industrial Design Infringement

For every business or brand owner at present, the design of a product has become a crucial concern, and why won’t it be, after all, “A thing of beauty is a joy forever.” The unique design of a product, such as that of Mini Cooper and Coca-Cola, forms brand identity.  The Designs Act of 2000 (referred to as ‘Act’ further in this article) governs and deals with the mechanism of registration, protection, and enforcement of industrial designs in India. The ultimate purpose of the Act is to safeguard the intellect of the proprietor of the design in question. The Act protects the designs that are original/new, not previously disclosed to the public, and can be distinguished significantly from other known designs or combinations of known designs.

Infringement of Industrial Designs 

To understand infringement of industrial designs, one needs to go through Section 11 and Section 22 of the Act. Section 11 of the Act enables and authorizes a registered proprietor to have Copyright Protection in the industrial design, and Section 22 of the Act protects such exclusive right.

A registered industrial design is said to be infringed by a person who applies, imports, or publishes it or any other obvious or fraudulent imitation thereof without the consent of the proprietor. Infringement of industrial designs takes place only in the following scenarios:

• The infringement is committed during the existence of copyright in the industrial design;
• The industrial design is applied or imitated without the permission of the registered proprietor;
• The industrial design is for the purpose of sale and not for personal or private use; and
• The articles must belong to the same class in which the industrial design is registered.

Liability of Industrial Design Infringement

The liabilities of the infringer of an industrial design are listed in Section 22(2) of the Act, also suggesting or indicating the remedies available to the registered industrial design proprietor. The registered proprietor of the industrial design has to select one of the alternative remedies available in this Section.

• Section 22(a) of the Act enforces the infringer of the industrial design to pay an amount not exceeding Rs 25,000 for every contravention recoverable as a contract debt to its registered proprietor. The total amount recoverable for one industrial design should not be more than Rs 50,000.
• The proprietor of the design, under Section 22(2)(b), can also choose to bring a lawsuit for the recovery of damages and an injunction against reputation damage. The infringer of the industrial design is then liable to pay the amount as awarded by the court and is restricted by injunction, respectively.

The objective behind these is to make the infringer of the industrial design liable for the loss suffered by the registered proprietor and secure a fair return on the proprietor’s investment. However, it is essential to note in this aspect that for claiming the damages, the registered proprietor of the design is required to mark his articles in some way, denoting that the industrial design is registered, and take all the steps to ensure the marking of the said articles.

Defenses Available to the Infringing Party

• There is a lack of novelty in the already existing registered industrial design;
• The functional aspect of the product is different from that of the already registered industrial design;
• Any grounds available for the cancellation of the registered industrial design under Section 19 of the Act;
• A contract concerning the registered design at the time of contravention of Section 22 of the Act, along with a condition declared unlawful under Section 42 of the Act;
• The contravention concerning the registered design should begin from the date on which the registration of the design ceased to have an effect and should last till the date of restoration of such registered design;
• The lawsuit for industrial design infringement, recovery of damages, etc., should not be filed in any court below the District Judge Court.

Case Laws Related to Industrial Design Infringement in India

• Niki Tasha Pvt. Ltd. v. Faridabad Gas Gadgets Pvt. Ltd.

Pleading for the grant of an interlocutory injunction requires the plaintiff to prove or show that the balance of convenience lies in his favor. In this case, the court held that there would be no grant of an interlocutory injunction unless the court is completely satisfied that there is a real possibility of the plaintiff succeeding in the lawsuit.

• Calico Printers Association Ltd. v. Ahmed Abdul Karim

In this case, the court held that in the instance of industrial design infringement, the order for delivery up of the infringed articles could be made by the court as a reasonable or equitable relief to the registered design’s proprietor, even though the same was not expressly provided in the Act.

• Micolube India Ltd. v. Rakesh Kumar

The Delhi High Court’s larger bench upheld the availability of the passing off remedy concerning industrial design infringement in the nation. 👉 ✅  For view-source: https://www.kashishipr.com/

Patent Search and its Types in India

 

Before we delve into understanding the concept of Patent Search, let us first make ourselves familiar with the definition of a patent. A patent refers to an exclusive right granted by the patent authority of a nation to the inventor or applicant of a unique invention. Patent Rights exclude others in the industry or market from manufacturing, using, selling, distributing, or importing the patented product or process. One of the essential requirements to be met for obtaining Patent Protection is that of novelty, i.e., the invention in question must be unique around the world.

Patent Search and its Importance

A patent search is the first step of the Patent Registration process in India, and that too is a crucial one. By performing a patent search, you can get an indication of what all information is available and accessible in the public domain concerning the proposed invention. The same shall assist you significantly in identifying, matching, and comparing the relevant patent or non-patent documents to determine the patentability of your proposed invention.

The prime objective of conducting a patent search is to notify the inventor or the applicant about the patentability requirements, including novelty, non-obviousness, inventive step, and industrial applicability.

All in all, the advantages of conducting a patent search are as follows:

• The chances of patent grant increase;
• You get clarity in drafting a patent claim in your Patent Application;
• The scope of patent protection extends; and
• It helps keep track of similar patents and the status of other patent filings.

Types of Patent Search

There are five types of patent searches that a patent applicant or inventor can perform, and they are as follows:

1) Freedom to Operate (FTO) Search

The FTO search, also widely referred to as the right to use or patent clearance search, is conducted before the unique invention or innovation gets launched in the commercial market to avoid Patent Infringement.

An FTO analysis is restricted to only active or granted patents and doesn’t include expired or abandoned patents. Additionally, the FTO search covers both the granted patents and pending patent applications to ensure that the proposed process or product does not infringe upon any other already existing patent.

For instance, if an inventor is looking forward to launching a product or process in India, it is always a brilliant idea to perform a patent search first in the nation itself. The patent search can assist significantly in coming across any potentially enforceable patents in the Indian Territory and knowing about their legal status.

2) Patentability/Novelty Search

Patentability/novelty search counts as one of the most common types of patent search. It aids the inventor or applicant in understanding whether or not the proposed invention falls within the scope of patentable subject matter. In general, it is conducted by a professional expert before, during the development stage of an invention, or prior to filing the patent application. There are multiple techniques available to conduct a patentability search, including International Patent Classification, Keyword Search, Assignee Search, and Application ID Search.

3) State-of-the-Art Search

Among the other types of patent search, the state-of-the-art search, also widely referred to as patent landscape search, is the broadest one. In simple terms, it is all about carrying out a market survey to determine the presence of identical or similar technologies existing in the market. This type of search also brings into light the competitors in the industry and reflects their technological development in the subject matter of interest.

Moreover, by recognizing the trend of already existing products or processes in the market, the state-of-the-art search helps minimize the extreme expenditure of money spent on inventions with no prospective market.

4) Validity/Invalidity Search

A validity/invalidity search is performed after the patent gets issued. The ultimate objective of this search is to assess whether the issued patent holds legitimate in contrast to the previous art published before the date of filing the patent application. This type of patent search is performed during infringement litigation or to mitigate the risk of infringement.

A patent validity search is undertaken to validate the claims of a patent, while a patent invalidity search is undertaken to invalidate the claims of a certain invention. The technique used in both types is the same; however, the outcome rests on the objective of the search.

5) Evidence of Use Search

Some companies and organizations actively explore products or processes infringing upon their patent rights, and this type of search is referred to as the evidence of use search. For coming across such products or processes, companies and organizations review similar patents and seek some evidence concerning the way the patent is utilized so that it infringes upon the searcher’s exclusive patent rights. This type of search is performed after the patent gets issued and matures. 👉 ✅  For view-source: https://www.kashishipr.com/

Overview of Direct & Indirect Trademark Infringement in India

Being a mixed market, India has many industries operating under the free market concept. Without any doubt, the competition in the Indian markets is exceedingly fierce. For any company to thrive and do exceptionally well in the open market, it must create brand recognition among the general public and enhance the brand value. The simplest mechanism of achieving the same is through Trademark Registration.

The prime purpose of a trademark is to help people identify and recognize the origin or source of a specific product or service. The origin or source of the said product or service helps people determine its quality. Consumers usually base their purchasing decision on the aspect of quality. A trademark reflects the source or origin and the quality of the products or services.

Based on all the previously mentioned points, it is imperative to ensure that no third party or entity infringes upon your Registered Trademark. Trademark Infringement usually causes immense loss of finances and goodwill to the owner of the infringed mark. Hence, it is highly recommended to stay vigilant and prevent potential infringers from riding on the reputation and goodwill that you established over the years.

Types of Trademark Infringement in India

Section 29 of the Trademarks Act, 1999 (referred to as ‘Act’ further in the article) has defined what constitutes trademark infringement in India. In simple and clear terms, trademark infringement occurs when an unauthorized person or entity uses a mark identical or deceptively similar to an already existing registered trademark. When looking into trademark infringement, one must know and understand its two types, which are as follows:

A) Direct Infringement 

A few constituent elements have to be met for direct infringement to occur, which are mentioned below:

1. Trademark Use by an Unauthorized Person– It implies that trademark infringement occurs when a registered trademark is used by an unauthorized person who is not the owner or the licensee of the said mark. If the registered trademark is used with the consent of its owner, it does not constitute an instance of trademark infringement.
2. Identical or Deceptively Similar Marks – The test for determining whether the mark used by the unauthorized person is identical or deceptively similar to an already existing registered trademark lies in exploring the possibility of a likelihood of confusion among the public. If a common consumer is likely to get confused between the marks and may think of them being the same, then there is an instance of trademark infringement.
3. Registered Trademarks – The scope of trademark protection, according to the Act, extends to only those marks that have been registered with the trademark registry of the nation. In the scenario where infringement of an unregistered mark is involved, the common law concept of passing off applies.
4. Class of Goods/Services – For establishing the infringement of a registered trademark, even the goods or services of the infringer must be identical or deceptively similar to the goods or services represented by the registered trademark.

B) Indirect Infringement 

There is no provision in the Act, unlike for direct infringement, dealing with the instances of indirect infringement specifically. However, the same doesn’t imply that there is no liability for indirect trademark infringement. The principle and application of indirect trademark infringement come from the universal law principle. It holds accountable both the principal infringer and even the one (if any) who abets or induces the direct offender to infringe upon the registered trademark. Indirect trademark infringement has two further categories, including:

• Vicarious Liability – It usually applies in the case of employer-employee relationships and is mentioned in Section 114 of the Act. As per this Section, if a company or a firm commits an offense under the Act, then every person responsible for the company shall be held liable except the ones who acted in good faith and didn’t possess knowledge about the said infringement.

A person shall be held vicariously liable under the following circumstances when:

• He has the ability to control the actions or activities of the direct infringer.
• He possesses knowledge about the instance of infringement and contributes to it.
• He may derive financial benefits from the said infringement.

*Kindly note that the only exception to vicarious liability of a company or a firm for trademark infringement is when it has acted in good faith with no idea about the said infringement.

• Contributory Infringement – A person shall be held liable for contributory infringement under the following circumstances when:
• He knows about the said instance of trademark infringement.
• He contributes materially to direct infringement.
• He induces the principal infringer to commit trademark infringement.

*Kindly note that in the case of contributory infringement, there exists no exception as there is no possibility of the contributory infringer to act in good faith.

Therefore, it would be wise to say that any form of trademark infringement, be it direct or indirect, can attract liability in India. To avoid trademark infringement, reach out to our trademark attorneys at kashishipr@kashishipr.com and get a consultation before launching your brand or product in the market. 👉 ✅  For view-source: https://www.kashishipr.com/

Protection of Color Trademarks under the Indian Trademark Law

A trademark refers to a recognizable expression, design, or sign uniquely identifying the products or services of a specific source and differentiating them from those of others. A trademark may be located on the packaging, voucher, label, or the product itself. Other than traditional or conventional trademarks, another category of trademarks exists, known as non-traditional or non-conventional trademarks, including motion marks, sound marks, scent marks, color marks, hologram marks, shape marks, 3D marks, position marks, taste marks, and texture marks. The single color or color combination of a product’s packaging can obtain Trademark Protection only if it is capable enough to be recognized by the general public as unique or belonging to a specific brand. A few examples of widely known color trademarks include Ferrero Rocher’s combination of golden and brown, Cadbury’s purple, Tiffany’s blue, etc.

In India, the Trade Marks Act of 1999 (referred to as ‘Act’ further in this article) safeguards the owner’s exclusive Trademark Rights to use the mark, thereby preventing any unauthorized or illegal use of the mark from confusing the minds of the general public. It aims at promoting the products or services in the marketplace while restricting the competitors from using the trademark and making profits through infringement. It also encourages safeguarding the interests of the traders and consumers in the market.

Under Section 2(1)(zb) of the Act, any word, label, name, device, brand, ticket, signature, heading, letter, numeral, the shape of products, packaging, the combination of colors, or any combination thereof can be registered as a trademark if the same fulfills the criteria of distinctiveness and graphical representation. However, the complications and issues arise in the cases falling outside the ambit of conventional or traditional trademarks, where the registration of which becomes arduous to be given an exclusive status.

Law on Color Trademarks in India

The definition of the terms ‘trademark’ and ‘mark’ provides for “combination of colors” or “any combination thereof.” Under the Act, a color is inherently indistinct; however, with sufficient acquired meaning, a color combination can gain distinctiveness and become capable of being registered as a trademark. A unique combination of colors can obtain trademark protection only if it is proved that such a combination is closely associated with the brand or product in question, and the brand or product can be recognized well by that specific combination.

Proving the distinctiveness or uniqueness of a proposed color trademark requires using the colors in a way that they perform the trademark function of distinctively or uniquely identifying the commercial origin of the products or services in question. The use of a distinctive or unique combination of colors helps the general public relate well to the products or services, which, in turn, enhances the market value of a specific source and excludes others from extracting benefits from the unique mark.

When we talk about filing a Trademark Application for a color mark, the applicant needs to provide evidence demonstrating that the color or combination of colors is solely associated with him, and the general public associates the same with the products or services specified in the application. The piece of evidence can be presented in the form of public surveys proving the association of the color or the combination of colors with the applicant’s brand or offerings.

It is essential to note that acquiring trademark protection for a color mark in the absence of sufficient supportive evidence may be difficult. The burden in this scenario is on the trademark applicant to demonstrate that the specific combination of colors or color has acquired distinctiveness in the course of trade or has acquired secondary meaning due to bonafide uninterrupted usage. For instance, ‘Orange’ may be distinctive as a trademark for a drink, but the orange color claimed for the packaging of the drink’s bottles would be non-distinctive.

Judgment of Indian Courts on Color Marks

• Cadbury UK Limited vs. The Comptroller General Of Patents Designs And Trademarks & Société Des Produits Nestlé S.A. (Case No: A3/2016/3082)

In this case, the British multinational confectionery company, Cadbury, proved that its distinctive and unique purple shade, i.e., Pantone 2865C, used on the packaging of its milk chocolate wrappers, gained a distinctive character over the years. A public survey was submitted as verification of this assertion, and the equivalent was granted on 1st October 2012 after a long-drawn-out legal battle with the Swiss multinational food and drink processing conglomerate, Nestle.

• Colgate Palmolive Company vs. Anchor Health & Beauty Care Pvt. Ltd. 2003 (27) PTC 478 Del

In this case, Colgate sought an ad-interim injunction against the use of trade dress and a color combination of one-third red and two-thirds white, in a certain order, on the container of the product, Tooth Powder. It alleged that the defendant, Anchor Health & Beauty Care, adopted similar trade-dress, specifically the color combination of red and white, and was passing off the product of Colgate as its own.

The Court, in this case, held that from the visual impression of a color blend, shape of the container, packaging, etc., it is the general impression that a customer gets concerning the source or origin of the merchandise. It further mentioned that if the first glance of a product, without getting into the details of the layout, color combination, or appearance of the packaging or container, gives the impression as to near or deceptive similarities concerning these ingredients, it undoubtedly becomes a matter of confusion and amounts to passing off one’s products as those of some other person or entity to extract undue benefits from the goodwill and reputation of the latter.

In this lawsuit, the Indian Judiciary recognized color as an integral part of trade dress and granted protection to it by restraining Anchor from using the red and white color combination in the order defined as trade dress on the container and packaging.

Final Thoughts

When allowing the trademark registration of color marks (belonging to the category of non-conventional trademarks), the courts have made it pretty clear that the test of distinctiveness is exceedingly strict. Therefore, it is obvious now that the registration of a combination of colors requires some ‘plus factor’ to be in place or secondary meaning to the color when attached to the product in question. Kindly note that there is no exhaustive test concerning whether the combination of colors has obtained distinctiveness; it all depends on how the customers perceive such a combination and how the courts can catch it. 👉 ✅  For view-source https://www.kashishipr.com/