Colour Marks are Inherently Distinctive

Our Associate, Madhurima Gadre discusses “Colour Marks are Inherently Distinctive”

On April 8, 2020, the Court of Appeals of the Federal Circuit (“CAFC”) in the United States held that colour marks, i.e., marks consisting solely of one or more colours without words or designs, can be inherently distinctive.

It all started in 2014 when Forney Industries, Inc. filed an application to register a colour mark (shown below) as applied to packaging for its goods.

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During examination of this application at the United States Patent and Trademark Office (“USPTO”), the Examining Attorney refused registration of the above mark on the ground that it is not inherently distinctive. Once the Examining Attorney issued a subsequent Office Action, Forney Industries, Inc. appealed the decision before the Trademark Trial and Appeal Board (“TTAB”). The TTAB affirmed the decision to refuse registration of the above mark on the basis that a colour mark applied to product packaging can never be inherently distinctive. Accordingly, Forney Industries, Inc. appealed the decision before the CAFC. The CAFC disagreed and observed that colour marks can be inherently distinctive when used on product packaging depending upon the character of the colour design. Further, as per the CAFC, the TTAB erroneously stated that a multicolour product packaging mark, such as the above mark, can never be inherently distinctive. The TTAB’s decision suggests that a multicolour mark must be associated with a specific peripheral shape in order to be inherently distinctive, which was also deemed to be erroneous by the CAFC. Accordingly, the CAFC vacated and remanded the TTAB’s decision to refuse registration of the above mark in order to conduct further proceedings consistent with the CAFC’s observations.

While the CAFC’s ruling is encouraging for those seeking to register marks that comprise solely of a colour combination, it remains to be seen whether the mark shown above is finally granted registration in the United States. It is worthy of mention that single colour marks, in the United States, are not recognized as being inherently distinctive. Therefore, in case of single colours, it would be necessary to demonstrate secondary meaning.

In India, the Trade Marks Act, 1999 (“Act”) defines a “mark” and “trade mark” as including a “combination of colours”. Moreover, there does not appear to be any precedent in India that has held that a combination of colours cannot be inherently distinctive. Therefore, in India, a mark comprising solely of a combination of colours may be held to be inherently distinctive and, therefore, capable of functioning as a source identifier. As regards single colour marks, the Act is silent on whether single colours are protectable as source identifiers. However, in the absence of a specific bar, it is to be presumed that single colours may be granted a trade mark registration in India. In fact, Christian Louboutin has secured a registration for its popular red sole mark after submitting evidence demonstrating that the mark had acquired distinctiveness (See Registration No. 1922048). However, whether single colour marks can be granted registration based on a claim of inherent distinctiveness remains to be seen!

Citation: In re Forney Industries, Inc., Appeal No. 2019-1073, 2020 WL 1696314 (Federal Circuit, April 8, 2020).