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U.S. Court of Appeals Allows Registration for Multi-Colour Product Packaging: Is This Coming Out of Closet?

In a recent decision involving Forney Industries Inc.1, the United States Courts of Appeal has paved a way for the registration of a multi-coloured product packaging as a trademark, having inherent distinctiveness, without proving any secondary significance or acquired distinctiveness.

Brief Facts:

Forney Industries, Inc. (Forney), a United States (US) based corporation, is engaged in the business activity of manufacturing and selling accessories and tools for welding machineries, amongst others. The company sought trade mark registration for the packaging of its accessories and tools. The proposed mark which is based on use of commerce is depicted below:

The Trademark application for the proposed mark was filed on May 1, 2014 under No. 86/269096. The registration for the mark was sought without showing the secondary meaning or the acquired distinctiveness of the said mark. Forney, in its trade mark application, identified the mark as “colour mark”, wherein it consists of black strip at the top followed by yellow colour that fades into red.

The Ld. Examiner refused registration of the mark on the ground that the mark is not inherently distinctive under Sections 1, 2 and 45 of the Lanham Act. It was further observed that such marks are registrable only on the Supplemental Register or on Principal Register with sufficient proof of acquired distinctiveness.

Aggrieved by the order of the Ld. Examiner, Forney moved a motion before the Trademark Trial and Appeal Board (hereinafter referred to as the ‘Board’). The Board affirmed the refusal order of the Ld. Examiner, relying on the decisions of the Supreme Court in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (1995), and Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000). It stated that the colour mark can never be inherently distinctive in the trade dress context and secondly, even if a colour mark is distinctive, it cannot be so without a well-defined peripheral shape or border.

Appeal before United States Courts of Appeal, Federal Circuit:

An Appeal was preferred before the Federal Circuit Court, against the order passed by the Board. The Court of Appeal held that the Board erred in coming to the conclusion that the colour – based trade dress mark can never be inherently distinctive and alternatively, product packaging mark having colour cannot be inherently distinctive in the absence of a well-defined peripheral shape or border.

Distinctiveness of mark on the basis of colour:

The Board had held that the colour, whether used on a product or its packaging, can never be  inherently distinctive. For the said decision, it relied upon certain judgments of Supreme Court (cited above). The Court of Appeal held that the Board and the Ld. Examiner had wrongly construed the judgments of the Supreme Court and in fact the Supreme Court has never directly addressed the issue with respect to inherent distinctiveness of multi-colour mark applied to product packaging. In Two Pesos, the Supreme Court held that inherently distinctive trade dress is entitled protection without showing a secondary meaning. The question of whether the trade dress in question was inherently distinctive or not, was not before the Supreme Court at that time. It merely held that the trade dress can be inherently distinctive.

Subsequently in 1995, in the Qualitex judgment, the Supreme Court considered whether a single and special shade of green-gold colour on a dry-cleaning pad can be protected as trade dress. It held that there is no bar to use the colour alone as a trademark, where it has attained a secondary meaning. The Court of Appeal held that although the Qualitex judgment implied that a showing of acquired distinctiveness may be required in case where a mark is based in colour, however, it did not expressly declare so.

The Supreme Court returned to these issues in its judgment of Wal-Mart Stores, Inc. v. Samara Bros, wherein it differentiated between two types of proposed trade dress marks – product design and product packaging. It went on to say “with respect to at least one category of mark-colours-we have held that no mark can ever be inherently distinctive”.2 The Court further held “design, like colour, is not inherently distinctive.”. In reaching this conclusion, the Court considered the fact that product design almost invariably serves purposes other than source identification. It further compared the trade dress (garment design) of Samara Bros (respondent therein) with the trade dress (décor of restaurant) of Taco Cabana in Two Pesos, Inc. v. Taco Cabana, Inc. and held that décor of a restaurant is not product design, it is product packaging and normally is taken by the consumer to indicate origin or source.

The Court of Appeal in the instant case observed that the Board erred in concluding that the proposed product packaging mark of Forney which consists of multiple colours is not inherently distinctive. The multi-colour product packaging is more akin to décor of the restaurant in Two Pesos judgment and hence, a source indicator. Since it is a source indicator, it falls fairly within the ambit of a ‘trade mark’ and hence, the decision of the Board is not in consonance with the decisions of the Supreme Court. It further went on to observe that the mark which is inherently distinctive and indicates the source and origin of goods need not establish a secondary meaning in order to secure protection. The need for secondary meaning arises when a mark is descriptive or when the mark itself cannot identify the source. With respect to the second observation of the Board, the Court of Appeal observed that the Board has unnecessarily tried to reply upon the condition that multi-colour packaging shall have well-defined shape and peripherals. Hence, it reversed the order of Board and remanded the matter back for further proceedings.

Way Forward:

It is true that although the matter has been decided by the Court of Appeal and may, in future, be reviewed by the Federal Circuit Court or be a subject matter of appeal before the Supreme Court, in the absence of any further order or appeal at this stage, if we analyse the present decision in the light of trademark laws or the anti-competitive Laws, we may agree that the present decision is in consonance with the objective of the trademarks laws. The object behind the trademark legislation is to identify the source of the goods or services, whether known or unknown. As long as any mark whether word, sign, name, symbol, device, colour, sound, smell or any combination thereof, indicates a source of goods or services, the same should ideally be entitled to protection under the trademark laws. Further, the US Supreme Court in Qualitex Co. v. Jacobson Prod. Co. has exhaustively laid down that registration of colour combination as a trademark will not lead to anti- competitive measures. Hence, it is safe to say that the order of the Court of Appeal is a way forward towards a finer and comprehensive protection of trademark rights.

Disclaimer: This article is written by the author for academic and research purposes and represents the author’s personal opinion on the judgment and is not a legal advice nor represents the firm’s opinion/view on the judgment or topic involved.

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1. Federal Circuit, No. 2019-1073, (April 8, 2020)
2. 529 U.S. 205 (2000) at 211-12

Authored  by-


(Mr.) Rakesh Raushan, Advocate
Associate  |  United IPR

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