VanshikaAs per the scheme of the Trade Marks Act, 1999, Trademarks that are registered without any limitation to colors have been protected as trademarks registered under all colors. Any violation with respect to such a registered mark can fall under the virtue of “infringement of trademark” for the use of similar marks leading to confusion in the market. The Madras High Court discusses at length the crux of registration of black and white marks, and the words “deemed to be registered in all colours” , in the case of ITC Limited v. Ganesh Flour Mills. , the matter dealt in infringement of trade dress – an area of trademark law that provides for protection against imitation of specific features including packaging or appearance of the product, which hints towards the source of the product.
ITC Limited (hereinafter “ITC”) is engaged in the business of FMC goods, hotels, packaging, and the like for over 100 years with brands such as Sunfeast, Bingo, Aashirvaad and Yippee! The marks and labels used for its products under the trademark – “AASHIRVAAD” were adopted in 2001 and have been in use ever since. Goods under the trademark “AAHIRVAAD” are being sold in India, the USA, Australia, Singapore and Canada.
Ganesh Flour Mills (hereinafter “Ganesh”) is also selling wheat flour under its own brand “Ganesh”.
Until 2013, there was no dispute between the parties. In 2013, Ganesh changed the layout, style and color scheme of its packaging for its “Ganesh” brand flour. Aashirvaad is sold in bags having a red and brown color scheme with the background effect similar to that of a woven gunny / fiber bag. Ganesh adopted a similar color scheme and a similar background retaining the trademark “Ganesh”. ITC filed a case in the Madras High Court, alleging an infringement of its trademark and trade dress.
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ITC contended, that although the wordmarks were not similar, the overall color scheme and trade dress was deceptively similar. Ganesh contended that ITC could not claim monopoly over the colors red and orange, particularly because the registrations obtained by ITC were in black and white.
ITC however pointed out that, Section 10 of the Trade Marks Act, 1999 expressly states that when a trademark is registered without any limitation of colour, the registration is to be “deemed to be registered in all colours”.
After hearing both parties, the Madras High Court agreed with ITC and concluded that Ganesh had infringed ITC’s trademark and therefore, injunction against Ganesh was an appropriate remedy.
It is a common practice to register trademarks in black and white in order to gain better and wider protection in law. If a trademark is registered in a specific color or a color scheme, the mark is limited to that color or color scheme but if it is registered in greyscale, registration extends to all colors.
