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Policy and Advocacy
Board Resolutions
Protectability of Color Trademarks





November 20, 1996 

Sponsoring Committee: Issues and Policy Committee


Resolution

WHEREAS, businesses increasingly are relying on color as a means of distinguishing goods and services in the marketplace; and

WHEREAS, while it is widely recognized internationally that devices which comprise a combination of colors can serve as trademarks and are entitled to protection through registration, the same is not true regarding single colors;

BE IT RESOLVED, that the International Trademark Association is of the position that color, whether a combination of colors or a single color, may serve as a trademark and, therefore, in appropriate circumstances, should be entitled to trademark recognition, protection and registration.


Background

There is no international consensus on whether color, alone, is protectable as a trademark. Several significant contemporary agreements, NAFTA, the EU Harmonization Directive and the EU Regulations, support recognition of single colors as trademarks in the proper circumstances. To the contrary is the Andean Pact which expressly precludes such protection. Others, such as the TRIPsS Agreement, do not rule out such protection.

For years courts have supported the concept of combinations of colors as protectable trademarks. But more recently, courts and trademark offices of more and more countries are coming face to face with the single color issue, such as the U.S. Supreme Court in Qualitex Co. v. Jacobson Products Co. (green gold ironing pad) and the Swiss Federal Intellectual Property Office in Re Kraft Jacob Suchard (violet package for chocolates) in which protection to single colors, under appropriate conditions, was affirmed.

The common arguments against extending trademark protection to color, whether a combination of colors or a single color, are unpersuasive. The objection that competitors might be excluded from using necessary colors is addressed by general principles of functionality underlying trademark law. Colors that are functional -- that "are essential to the use or purpose of the article" or that "affect the cost or quality of the article" -- are not entitled to trademark protection, in the same manner that functional trade dress, or generic terms, are equally unentitled to such protection. The recent Glaxo Group case in Australia is a case in point (colors of asthma inhaler found to be functional). The proposed resolution makes this clear by encouraging protection only when the color functions as an indicator of source or origin, as is required for protection of other, more traditional forms of trademarks.

Courts that have recently addressed the color issue, such as the U.S. Supreme Court in Qualitex, have ably addressed the other major objections to color protection, namely color depletion and shade confusion. Color depletion should not be of significant concern because of the vast number of colors available and because those colors that are functional in the relevant industry could not be the subject of trademark rights. Shade confusion is no more serious than the potential for confusion between word marks; courts should be just as capable of rendering a decision as to likelihood of confusion as to color marks as they would be in the context of more traditional marks.

On at least two prior occasions, INTA has supported the principle that the U.S. Lanham Act permits protection of color as a trademark. INTA submitted an amicus brief on behalf of the party claiming trademark rights in a single color in Qualitex, to the effect that the Lanham Act did not preclude such protection. Moreover, the INTA report underlying the 1988 amendments to the Lanham Act requested that the U.S. Congress not amend the definition of a trademark in a way that would eliminate the potential for protection of color. This resolution is designed to move INTA's position to a more proactive level at a time when the protection of color as a trademark is an increasing issue internationally, particularly by countries considering implementing legislation and regulations to comply with the TRIPS Agreement.

The Committee believes that it is necessary for the Board to formalize INTA's position on this fundamental principle of protectability of color marks without including related implementation issues, such as whether a showing of acquired distinctiveness should be a requirement of protection, or how such acquired distinctiveness might be established in a color.

The resolution contemplates that such issues will be left to the domain of individual jurisdictions. The Committee notes, however, that other INTA committees are or may be working on related implementation issues, including the Trademark Office Practices Committee (Examination Guidelines Subcommittee) and the Legislation Analysis Committee (Model Law Subcommittee).

Accordingly, the Committee requests that the Board of Directors adopt the foregoing resolution supporting protection for color trademarks.