Colour As A Trade Dress In The Pharmaceutical Industry

Introduction

The notion of trade dress is defined in Section 2(zb) of the Trademarks Act 1999, which defines a ‘trademark’ in broad terms, including shape, packaging, and color combinations, as long as they can be graphically depicted and identify goods or services. Colors and color combinations are important in distinguishing products on the market. A color trademark is one in which at least one color is utilized to perform the trademark function of uniquely identifying the commercial origin of goods and services. A single color trademark can now be registered in a number of nations. Color marks on pharmaceutical items are increasingly being registered by pharmaceutical companies to identify the source of those products as belonging to their brand. It’s for a variety of reasons. For one, many customers currently purchase over-the-counter (OTC) drugs, and trademarks help them recognize a trusted brand. Second, color trademarks serve as a mark of the brand that develops it, and third, color on pharmaceutical items has grown to be considered as generating a brand image.

The emergence of Colour Trademark in the Pharmaceutical Industry

Pharma[Image Source: gettymages]

Until the mid-nineteenth century, all prescription medications in tablet form were uniformly white and spherical. White or pastel-colored OTC medications were also available. In the 1960s, color was added. With the introduction of soft gel capsules in 1975, colors like red, yellow, and lime green became popular. In today’s pharmaceutical industry, there are dozens of colors to choose from. The colors used are for marketing purposes only and have no influence on the drug’s efficacy. Color marks have become a critical branding tool in the pharmaceutical industry because they address visual qualities by distinguishing products from those of competitors. Colors are currently being utilized to create brand images, express the personality of products, and distinguish them from rival brands; as a result, pharmaceutical firms are spending a lot of money on the most attractive and appealing trade dress and markings for every new medicine they release.

Effectively registered trademarks with acquired uniqueness may prevent generic businesses from producing products that look comparable. Customers may stick to the registered products since the generic versions will resemble the originals from a brand they already know and trust.

How to register Colour marks: International perspective

According to the TRIPS Agreement, “Combinations of colors shall be eligible for registration as trademarks, but members may limit registrability on uniqueness acquired through usage, and members may require, as a condition of registration, that signs be visually discernible.” As a result, countries can register color trademarks based on their acquired distinctiveness and graphical depiction.

In the past, courts in the United States were hesitant to accept marks consisting solely of colors or color combinations. In the case of Qualitex Co. v. Jacobson (1995), the United States Supreme Court declared that “occasionally, a color will meet conventional legal trademark requirements.” When it does, no particular regulation forbids color from being used as a trademark by itself. The Court did, however, point out that a single color may not be innately unique and may only be protected if it has acquired a secondary meaning through use in conjunction with descriptive marks or words. As a result, the following are the two most important requirements for getting a trademark registration for a single color mark:

  1. The color must have acquired distinctiveness, and
  2. The color must not be functional to the mark.

Before registering a color per se, countries like Germany, Norway, Sweden, and the United Kingdom need a “display of secondary meaning or acquired distinctiveness.” This guideline is likewise followed by the European Union Intellectual Property Office (EUIPO). Colors have also been recognized and registered as trademarks in the United Kingdom, such as “silver for anthracite briquettes,” “red for a shackle pin,” and “three red bands on the handle of rackets.”

How to register Colour mark: The Indian Perspective

Among all industries in India, the pharmaceutical industry has the highest number of trademark registration applications. Color marks, particularly single color marks, are difficult to register in India. Although the Trademark Act of 1999 does not expressly prohibit the registration of single color marks, demonstrating distinctiveness in a single color is difficult unless the color has come to characterize the source/origin of the product as a result of a long association with a specific mark, allowing easy differentiation of the product from others in the same class. Single-color trademarks, such as the color purple for Cadbury, the color blue for Parachute bottles, the color magenta for Telekom AG, and so on, have been protected in India.

The following principles for registration of color markings are provided in the Manual of Trademarks, Practice, and Procedure 2015:

  • If the applicant is claiming a trademark for a color combination as applied to goods or packaging, or as utilized in relation to their services, they should identify the property as a color trademark. Along with providing a graphical representation of the trademark and an exact description of the color combination as defined by the International Classification System of Colors, the applicant must also include a concise and accurate explanation of the trademark on application.” The trademark consists of a maroon color applied to one half of a capsule at one end, and a gold color applied to the other half, as illustrated in the representation on the application,” the manual says, citing an example of a suitable form of description for a trademark that consists of a combination of colors applied to a pharmaceutical capsule.
  • If it is stated in the application that the trademark comprises solely of a color combination, the trademark will be considered a color trademark. If a particular combination of packing colors has become identifiable as representing the goods of a specific dealer, it may be protected by registration. However, if the colors are not employed in a unique or specific pattern or arrangement, it will be more difficult to demonstrate that color lends distinction as a sign of origin in such circumstances.
  • Wherever an exclusive right to color is sought, strong evidence should be required to overcome an objection under Section 9(1)(a) of the Trademark Act of 1999, which prohibits the registration of trademarks that lack distinctiveness.
  • If a single color is particularly rare and peculiar in a trade and is recognized by both traders and consumers as a badge of origin for that class of goods, it may be registrable as a trademark. A color combination might be registrable, but it depends on how unique it is and how it is used. When applications consist solely of colors applied to products or their packaging, it will be required to examine how uncommon the color combination is in respect to the commodities and if, prima facie, the combination is likely to strike the relevant consumer as a trade source signal.

Judicial Standings:

In the case of AstraZeneca AB v. Dr. Reddy’s Laboratories, Inc., (2015), AstraZeneca, a British pharmaceutical firm, sued Dr. Reddy’s Laboratories, Inc. in Delaware in 2015 over the purple color of the generic brand of Nexium, which they marketed as “the purple tablet.” Dr. Reddy’s Laboratories in the United States sold the generic pill, which was also purple in color. AstraZeneca claimed that this was a significant infringement of the two firms’ agreement. AstraZeneca claimed that the shade of purple utilized was identical to that of the original medicine, thereby successfully infringing on its purple medicine trademark registration. Dr. Reddy’s Laboratories eventually had to relaunch the generic capsules in blue. Dr. Reddy retaliated by bringing a countersuit in a New Jersey court, alleging that the filing of this case was a substantial breach of a 2011 settlement between the two pharmaceutical companies. According to the terms of the agreement, Dr. Reddy is no longer liable for the Nexium pill.

It’s easy to imagine that if a similar legal battle had taken place in India, the ambiguity surrounding the subject of registrability of color marks would obstruct any chance of a favorable decision in a case involving the more conservative issue of registrability of color marks in medicine.

While the Delhi High Court acknowledged that even a single color can be registered as a mark in Colgate Palmolive Company v Anchor Health and Beauty Care Pvt Ltd (2003), the Court in Cipla Limited vs M.K. Pharmaceuticals (2008) made the diametrically opposite assertion that monopoly over colors cannot be claimed. The Court stated the following on the issue of pharmaceutical color marks:

“The medicines are not bought by colors by the customers. There are a 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 color tablets. All medicines are purchased at the advice of Doctors and they are sold on prescription. Even those tablets readily available without a prescription, are known by their names. The distinctiveness of the medicines is in the name and not in the color and shape”.

Conclusion

Based on the foregoing study, it is obvious that registering color marks in the pharmaceutical business faces numerous obstacles, both nationally and globally. Because the pharmaceutical business is increasingly using color marks, it is important to follow trademark rules and processes to guarantee that the color mark identifies the product’s source, that the color is not a functional part of the product, and that it has acquired uniqueness. However, there is no definitive criterion to determine if a color has acquired distinctiveness; it all depends on how customers perceive it. Although, because the decisions of the courts differ in this regard, it may be essential to investigate one of the problems of whether the color of a pill has any bearing on the consumer’s choice of treatment in order to get down to the nitty-gritty of the matter. Of course, this is only relevant when discussing over-the-counter medications. Because the transaction is not done in the light of the traditional buyer-seller interaction, where the customer makes a choice based on his own impressions, the color of prescription medication should have no bearing on whether or not the consumer decides to buy it at all. The doctor makes the decision for the customer; the consumer simply follows the doctor’s instructions and purchases medication as directed. As a result, pharmaceutical businesses must use distinctive trademarks, particularly color marks, to create their brand.

Author: Anuja Saraswat – a student of  B.A.LL.B (Hons.) from NMIMS Kirit P. Mehta School of Law (Mumbai), in case of any queries please contact/write back to us via email vidushi@khuranaandkhurana.com or contact us at IIPRD.

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