Asia IP

It was not long ago that colour trademarks were strictly categorized as unconventional trademarks along with sound marks, olfactory marks, etc. However, with the passage of time, we have witnessed colour marks getting wider protection than their counterparts in the unconventional marks family.

India has witnessed a large amount of trademark litigation in recent years. Indian jurisprudence has also adapted to concepts which were considered new and unexplored in the past with relative ease. Therefore, while delivering its judgment in a trademark infringement lawsuit brought by Deere & Co. (often referred to as John Deere due to its historic and world-renowned tractors and agricultural vehicles), the Delhi High Court has declared the word mark John Deere, the “leaping deer” logo and the company’s green-and-yellow colour mark as well-known trademarks.

The plaintiff is one of the largest manufacturer of construction and agricultural equipment of the world. It was aggrieved by the advertisement and sale of tractors and harvesters by the defendant, using a deceptively-similar colour scheme of green and yellow, in the same manner and style as that of the John Deere tractors and harvesters. Moreover, the defendant was also using a tractor bearing the leaping deer logo on top of its harvesters. Accordingly, the plaintiff had brought a lawsuit for infringement of trademark and passing off of trade dress.

The Delhi High Court had awarded an ex parte ad interim injunction in favor of the plaintiffs, thereby restraining the defendants from using the trademark and colour scheme in relation to its agricultural equipment. The parties arrived at an amicable settlement leading to the quick disposal of the suit earlier this year.

However, based on the extensive evidence presented by the plaintiff in support of its family of John Deere trademarks, the court proceeded to render judgment in support of their wellknown status.

John Deere, the largest exporter of tractors to the world from India had filed extensive evidence in support of each criterion needed to prove wellknown trademark status. For instance, the use of the colour scheme for the last 100 years; the extensive sales accrued in favour of the plaintiffs; the extensive recognition of its trademark not only abroad, but also by thousands of farmers in India; and its special recognition by Prime Minister Narendra Modi when he governed Gujarat all supported the plaintiff’s claim for extensive use and reputation. Moreover, the extensive sales literature and localized documents presented before the court established that the immense reputation of the John Deere trademarks had percolated deep into the Indian agricultural industry.

More importantly, the plaintiff was able to establish successful enforcement of its rights in the colour scheme by showcasing that a large number of tractor manufacturers across the world had undertaken to the plaintiff to restrain from using the green and yellow colour scheme in relation to their tractors. Therefore, over the years, not only did courts across jurisdictions recognize John Deere’s proprietary claim over the green and yellow colour scheme, but some of its marks were also declared well known.

Jurisdictions have recognized distinctive marks which involve a combination of colours. Jurisprudence has also evolved to protect single colour marks that may not be distinctive enough to protect as a trademark, but when such marks acquire a secondary meaning through use, they could be protected.

The declaration of a trademark as well-known offers it the widest form of protection against misuse and/or adoption of a deceptively similar mark by third parties. Therefore, the court’s finding will allow John Deere to restrain entities from misusing its green and yellow colour scheme in relation to agricultural products to draw a mala fide association with John Deere.

At this point, it needs to be highlighted that John Deere’s rights have been recognized in the colour mark and not in the colours green and yellow in general. These shades of the green and yellow colours have been expressly recognized by Pantone as John Deere Green and John Deere Yellow. Moreover, it has also been established that while monopolizing any of the seven primary colours is excellent fodder for the colour depletion theory, securing trademark registrations over particular shades and combination of such shades is keeping in line with the principles of trademark law.

The present judgment certainly marks a significant shift in the development of Indian trademark law. Hopefully, this decision will serve as the foundation for the development of jurisprudence surrounding colour trademarks, not only in India but in other jurisdictions as well.

Anand and Anand

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About the Author

Pravin Anand is a managing partner at Anand and Anand, specializing in IP litigation and dispute resolution. He completed his law studies in New Delhi in 1979 and since then has been practicing as an IP lawyer. He has been a counsel in several landmark IP cases including India’s first Anton Piller Order, first Mareva Injunction Order, first Norwich Pharmacal Order and the moral rights of artists.

Neha Reddy is an associate at Anand and Anand, where she is part of a team which has handled numerous landmark cases, including the John Deere well-known trademark and colour mark case written about here. She has also been involved in cases involving trademarks belonging to Microsoft, Ferrero Rocher, Mitsubishi and Honeywell.

Siddhant Chamola is an associate at Anand and Anand, where he is part of a team which handled numerous landmark cases, including the John Deere well-known trademark and colour mark case written about here. He has also been involved in a case involving trademarks belonging to Honeywell.