Center for Advanced Study & Research on Intellectual Property

 

CASRIP Newsletter - Autumn 1999, Volume 6, Issue 2

Protection Of A Color Under The Law Of The United States, Germany, And Japan

by Maria Cristina Caldarola*

A. Introduction

Due to the invention of color television and the new possibilities in the printing industry, color has increased importance in both the advertising and the packaging industries. Businesses pay more attention to color, because color can have a significant effect on sales. People have preferences for certain colors, because they associate that color with a traditional symbolism. For example: the color black is often considered in western countries to represent evil; red is often related to luck and happiness in China; and purple is associated to royalty in Japan. Preferences are not only influenced by symbolism, but also by demographic factors such as gender, race and socioeconomic class. As a result, businesses try to choose colors with a maximum of psychological appeal, visibility, and symbolism to represent the content of the product and also to represent the company's product line.

Due to the impact of colors on sales, many businesses have expressed in recent years more and more interest in protecting their colors. This development manifests itself not only in national statutes, but also in the international Agreement on Trade-Related Aspects of Intellectual Property Rights, including Trade in Counterfeit Goods of the TRIPS Agreement, that has been signed by Germany, Japan, and The United States. According to Section 2, Article 15(1) of the TRIPS Agreement:

[A]ny sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colors as well as many combinations of such signs, shall be eligible for registration as trademarks...1

This article explores and compares protection of color offered in trademark law in The United States, Germany, and Japan. The article will first analyze the statutory language and then will look to the case law as it has developed in the different countries.

B. Statutory Language

I. In the United States

In 1946 the Trademark Act, which is commonly called the Lanham Act, was passed by the US Congress. Section 45 of the Lanham Act states:

[T]he term "trademark" includes any word, name, symbol, or device, or any combination thereof

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.2

Although color is not explicitly enumerated, the words of the statute do not exclude trademark protection of color. This is consistent with Section 2 of the Lanham Act which states that no trademark shall be refused registration on the principal register on account of its nature unless one of the stated exceptions listed in the statute applies.3 Numerous cases show that trademark protection has been granted in unconventional areas, for example: for the triangular shape of a chemical4 and for the ring of the liberty bell'.5

II. In Germany

According to Section 3 (1) of the German Trademark Law6

[A]ny sign, particular words (including personal names), designs, letters, numerals, acoustical signs, three-dimensional configurations which are capable of distinguishing the goods or services of one undertaking from those of another undertaking may be protected as trademarks. Three-dimensional configurations include the shape or packaging of a product as well as other compilations including color and compositions of colors.7

According to the statutory language colors and color combinations fall under the term "trademark" and are protected under the statute. Protection was also confirmed by legislative intent, which states that in the future any sign should be able to be protected.8 The statutory language had explicitly mentioned color and color combinations for clarification in addition to three-dimensional shapes and sounds. The joint statement by the Council and the Commission of the European Communities9 also supports this interpretation. Although Article 2 of the Council Directive10 does not mention colors or color combinations, the joint statement states the Council and the Commission consider that Article 2 does not rule out the possibility of registering, as a trademark, a combination of colors or a single color, provided that they are capable of distinguishing the goods or services of one undertaking from those of another undertaking.

III. In Japan

Article 2 of the Trademark Law11 contains a definition of the term trademark:

In this act trademark shall mean letters, figures, or symbols or three dimensional shapes or any combination thereof including in combination with colors and

(a) are used by a person in respect to the goods it manufactures, certifies or sells as part of its business or

(b) are used by a person in respect to the services it offers or certifies as part of its business...

According to Article 2 color, alone or in configuration, can not be registered and is not protected under trademark law. Although the statute explicitly states a color combination without configuration is not protected, one can interpret that a color combination with configuration could be registered as a trademark. Thus, a color combination would need a configuration determined by the choice of a three dimensional shape, symbols, figures or letters.

C: Case Law

Based on the statutory language it will now be looked to the interpretation by the courts.

I. In the United States

Color as part of a product's trade dress and as a feature of a mark has always been capable of protection. In March 1995, the United States Supreme Court clarified this in its decision Qualitex Co. v. Jacobsen Products Co.12 stating that a color, by itself, is able to be registered.13

1. Statutory Interpretation prior to 1995

Although color is not mentioned in Section 45 of the Lanham Act, the words of the statute do not preclude trademark protection of a color. However, prior to the Qualitex decision14 in 1995, US courts denied the protection of color. This denial was based on two major policy considerations: color depletion and shade confusion.15

The color depletion theory is based on the principle that there are only a limited number of available colors. The courts reasoned the choice of available colors would soon be depleted if companies were allowed to monopolize a color and all of its shades. If color protection were permitted, courts would have to compare two similar color shades to determine whether there is a likelihood of confusion between the two shades (shade confusion). The task of determining whether two shades are similar enough to cause confusion would be too difficult.

The color depletion theory, as defined in these early cases, appears to have been an absolute bar to the protection of color per se as a trademark. Evidence demonstrating there was no need to have the color remain available for use by other competitors was of no moment. In effect, the color depletion theory acted as a harsh irrebuttable presumption that color was needed in the particular market.16

2. The rejection of the traditional view in the1995 Qualitex decision

In 1985, the US Court of Appeals for the Federal Circuit rejected the traditional view on color depletion and shade confusion and held in Owens Corning17 that the single color of a product is capable of being registered as a trademark. However, the subsequent cases Nutrasweet Company v. Stadt Corp. and Cumberland Packaging Corp.18 as well as Master Distributors Inc. v. Pako Corp.19 were two decisions where the court rejected the new precedent of In Re Owens Corning Fiberglas Corporation.

The Supreme Court finally resolved the split of opinion in its decision Qualitex Co. v. Jacobsen Products Co.20 This decision favored the Federal Circuits' interpretation in In Re Owens Corning Fiberglas Corporation.

Petitioner Qualitex manufactured dry cleaning press pads called "Sun Glow." The pads were sold in a special shade of green-gold for more than thirty years. The product consisted of rubber, fiberglass, and insulated materials covered with a specially treated fabric to resist heat and reduce wear. In 1957 Qualitex registered its trademark "Sun Glow" at the USPTO. Only in 1991 Qualitex registered the green-gold color on its press pads as a trademark. Until 1989 Qualitex was the only press pad manufacturer who used a green-gold color for press pads in the dry cleaning and garment industry.

Qualitex advertised its product in the "American Dry-Cleaner Magazine" since 1960 and the green- gold color had been a feature since 1970 as a color advertisement. More than 1.5 million Dollars were spent by Qualitex to promote the green-gold color in the years between 1960 to 1990. More than one million green-gold Sun Glow press pads had been sold in this period.

The defendant Jacobsen started to manufacture a similar dry cleaning product in 1989. He used the same green-gold color by using the green-gold material that Qualitex rejected as seconds. When this source was exhausted, he contracted with United Textile & Supply Company and intentionally copied the green-gold color used by Qualitex.

Qualitex won in the District Court,21 but the Ninth Circuit22 set aside the judgment on the infringement claim. The Supreme Court of the United States reversed the judgment.23

The Supreme Court concluded that sometimes a color would meet the ordinary legal trademark requirements, and when it does so, no special legal rule prevents color alone from serving as a trademark.24 Since the source distinguishing capability of a mark not its ontological status as color, shape, fragrance, word, or sign, no basic policy objective is served by an absolute rejection of the use of a color as a mark.25 Sometimes color could play an important role in making a product more desirable, but sometimes it would not. This latter fact, that sometimes color is not essential to a product's use or purpose and does not affect cost or quality, indicates the doctrine of "functionality" does not create an absolute bar to the use of color alone as a mark.

The Supreme Court rejected the argument of shade confusion, stating that courts traditionally decide quite difficult questions about whether, in context, two words or phrases or symbols are sufficiently similar to confuse buyers. Legal standards would be created to guide courts in making such comparison.26

The Supreme Court also rejected Jacobsen's argument of the color depletion doctrine, because it relies on an occasional problem to justify a blanket prohibition. When a color serves as a mark, normally alternative colors would likely be available for similar use by others. Moreover, if that is not so, if a color depletion or color scarcity problem does arise, the trademark doctrine of functionality would seem to prevent the anti-competitive consequences.27

The court also rejected the argument that there was no need to permit a color by itself to function as a trademark. The court argued that a firm might want to use color, pure or simple, instead of color as part of a design, because consumers can see it from a distance. Further, trademark law would give protection that trade dress protection would not. As examples of instances where the trademark law would provide such protection the court listed the prevention of importation of confusingly similar goods, the provision regarding constructive notice of ownership, and the prima facie evidence requirement of validity and ownership.28

The last argument of the defendant was also rejected. Jacobsen reasoned the prior Supreme Court case law supported its position. The Supreme Court in Qualitex stated the 1946 Lanham Act embodied crucial legal changes liberalizing the law to permit the use of color alone as a trademark. At a minimum, the Lanham Act's changes left the courts free to reevaluate the preexisting legal precedents which had absolutely forbidden the use of color alone as a trademark.29

3. Conclusion

The Supreme Court in its decision in Qualitex resolved the split among the different circuits. It held that there is no absolute bar to the use of color per se as a trademark. It now permits the registration of a color per se as a trademark. The color depletion theory and the shade confusion doctrine are no longer arguments for the denial of a registration of a color as a trademark.

The Supreme Court held color per se may be registered as a trademark if it meet the basic legal requirements for use as a trademark. According to the U.S. law, trademark protection is granted if the color or color combination is used by a person in commerce and has distinctiveness. However, regarding the requirement of secondary meaning the court remains unclear.

The court stated:

We cannot find in the basic objectives of trademark law any obvious theoretical objection to the use of color alone as a trademark, where that color has attained "secondary meaning" and therefore identifies and distinguishes a particular brand.30

This provision may be interpreted in several different ways. It could mean that color per se can be registered as a trademark only when it has acquired secondary meaning. As a consequence a color, which is inherently distinctive, but which has not acquired secondary meaning, would not be eligible to be registered as a trademark.

There are four different types of classifications in US trademark law: A mark can either be (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful.

Generic marks are those marks that denote the product itself, rather than the source of the mark. They are never entitled to trademark protection.31 Free competition is the policy basis for the denial.

Descriptive marks are those marks that describe a significant characteristic of the article. They normally convey an immediate idea of the ingredients, qualities, or characteristic of the goods.32 They are only entitled to trademark protection if a secondary meaning is shown. In order to determine if a secondary meaning exists, courts look to consumer studies establishing consumer recognition, length, and exclusivity of use by examining sales success, advertising expenditures, and unsolicited media coverage.

Suggestive marks are those marks that require the imagination, thought and perception of a consumer in order to determine the nature of the goods.33 In this category a mark is considered as inherently distinctive and worthy of protection immediately. Such marks do not need the requirement of secondary meaning. Arbitrary or fanciful marks are treated like the suggestive marks. They are inherently distinctive.

Arbitrary marks34 are those marks that use a familiar word in an unfamiliar way, while fanciful marks35 are those marks which are invented solely for its use as a trademark.36

The Supreme Court further stated in the Qualitex decision that "a product's color is unlike fanciful, arbitrary, or suggestive words or designs which almost automatically tell a customer that they refer to a brand."37 This statement implies that a color will always be descriptive and that the showing of secondary meaning is always necessary in order to ensure that the color gets trademark protection. However, the court gave no reason why a color will always be descriptive. Considering the fact the green-gold color of the Qualitex press pads does not convey an immediate idea of the ingredients, qualities or characteristics, and considering the fact that Qualitex had developed that color specifically for the use as a trademark, the reasoning of the court seems irreconcilable. These facts indicate that a color can also be suggestive, arbitrary, or fanciful.38 The assumption that a color can also be suggestive, arbitrary, or fanciful would also be compatible with the statement of the court that a color per se can be registered as a trademark if it meets the basic legal requirements for use as a trademark. I believe there are limited areas where colors are inherently distinctive, and that those colors should be entitled to protection without showing secondary meaning.

Case law developed after Qualitex39 give no definitive answer as to whether secondary meaning will always be a requirement in order to get trademark protection for a color. However, these decisions seems to interpret Qualitex as requiring a color to have a secondary meaning regardless whether the color is descriptive, suggestive, arbitrary, or fanciful. One decision states:

In light of the Supreme Court's decision in Qualitex, color is today capable of obtaining trademark status in the same manner that a descriptive mark satisfies the statutory definition of a trademark, by acting as a symbol and attaining secondary meaning.40

Other courts41 seem to follow this view. However, this interpretation does not fit into any of the established categories.

II. In Germany

In Germany there was an intensive discussion around the protection of colors during the fifties and sixties.42 The Supreme Court concluded the discussion by deciding the case Maggi.43 However, in 1995 the discussion about color protection arose again, due to the reformation of the German Trademark Act as a result of the European Directive, and the first registration of a color, purple for chocolate, granted in May 199544.

1. Protection of Color Before the 1995 Amendment

Before the amendment in 1995, color could only be protected as part of a product's trade dress. Since color was usually used in connection with words, images, or a certain shape of a product, color was indirectly protected as part of the whole trade dress.45 In addition, it was possible to protect a single feature of a trade dress apart from the entire trade dress.46 As a consequence color was required to be part of a shaped and linear object in order to be protected. Abstract protection of a color was denied by the Supreme Court.47

2. The Protection of Color After the Amendment in 199548

According to statutory language and legislative intent,49 color can be protected as a trademark. However, the Patent Office50 as well as the Federal Patent Court51 refused to register color as a trademark based on the arguments that an abstract color can not be graphically represented and that the statutory language should be interpreted in a traditional way. As a consequence, protection of color was limited to trade dress protection. The Supreme Court rejected, in December 199852, this interpretation and ruled that color should enjoy trademark protection.

The applicant applied for the registration of the colors black and yellow. He submitted a sample of the colors and added the correspondent RAL53 numbers to his application. The color trademark was required for the class No. 9, which included control and recording apparatus as well as signaling systems. The Federal Patent Court refused to grant the trademark yellow and black to the applicant.

In its reasoning for the rejection, the court looked to statutory language and legislative intent emphasizing the granting of protection to a single color or color combination. In order to grant a single color trademark protection, colors would have to fulfill the same requirements of any other trademark.

The purpose of the new Trademark Law was to harmonize the different legal provisions of the different members of the European Community. This intent is manifested in the heading of the new law. The law had been put into effect through the statute to reform the Trademark Law and through the First Council Directive approximating the laws of the Member States on trademarks adopted on December 21, 1988.54 The statutory language therefore needed to be interpreted by a First Council Directive. A resort to the former national Trademark Law was forbidden by the harmonization of the Trademark laws.

The court further noted the legislative intent did not state any restriction on the registration of a single color. It also cited the First Council Directive55 that mentioned that any sign that is capable of distinguishing the goods or services of one undertaking from those of another undertaking may be registered. The Court refers also to the "Orange" decision56 of the Third Board of Appeals of the harmonization office which stated a color can generally be registered as a trademark.

The Supreme Court could find no reasons why a single color or color combination should not be able to receive protection, since color is frequently used to distinguish the goods and services of one undertaking from those of another undertaking. It's interpretation of the new Trademark Law would not only be compatible with the practice of other members of the European Community57 but also with the practice of the United States with regard to color.

3. Conclusion

In contrast to the former Trademark Law, the amendment now permits the protection of a color as a trademark. Protection of color is not dependent on a certain shape or determined by other boundaries. In sum, abstract color protection is now granted.

The court stated that in order to register a single color or color combination the ordinary requirements for a trademark protection have to be fulfilled.58 Trademark protection is granted when a color is capable of being graphically represented, and when it has distinctive character. The latter requirement is not necessary if the color has acquired secondary meaning. In contrast to the former German Trademark Law and the US Trademark Law the showing of secondary meaning is not always necessary.

4. Comparison Of US and German Views

a. Graphic Representation

According to Section 8 (1) of the German Trademark Law59 a trademark can not be registered if the mark can not be graphically described. The purpose of that provision is not to complicate the registration of a trademark, but rather to create transparency in the law. The protected subject of a registered trademark should be able to be determined after a request at the Trademark Registration Office. Many color trademark applicants submit a sample of the color and define the specific shade by using the RAL number. Previously, the Patent Office regularly denied the registration of a color trademark due to insufficient graphic representation in the application. However, the Federal Patent Office has ruled in recent cases that the description used by the applicant is satisfactory if the color is reproduced, the quantitative proportion and the sequence of the colors is stated.60

The requirement of graphical representation differs between Germany and the United States. The system in the United States does not take account of the hundreds of shades available for appropriation, since the rules and practices do not provide a method to specify particular color shades or hues apart from the colors designated on the application.

The existing rules and practices in the registration of a color mark require the applicant to designate colors on the registration application by using various patterns of lines. Certain linings are usable for two different colors. A color registration by the PTO involves only 12 colors. The colors are red/pink, brown, blue, gray/silver, violet/purple, green, orange, and yellow/gold. When one of the dual color linings is used, the word description of the mark accompanying the drawing controls the determination of which of the colors is intended.61 Since the rules and practices do not provide a method to specify color shades or hues apart from the colors designated on the application, the system does not take account of the hundreds of shades available for appropriation by competitors. As a consequence the PTO is not able to provide notice sufficient that a competitor would be able to choose a dissimilar color for their product. As a result of this registration system several inevitable practical problems arise. The facts of Amsted Industries Inc. v. West Coast Wire Rope & Rigging Inc.62 reveal many of these problems:

West Coast Wire sought trademark registration for a wire rope comprised of one green strand and one yellow strand. Amsted, a competitor, was producing a wire rope with two adjacent yellow strands opposed the registration. Amsted claimed that trademark protection for West Coast Wire's product would deceive or confuse customers. The Trademark Trial and Appeal Board was forced to rely on photographs of poor quality in order to determine the actual shade of the colors because neither party introduced samples of their products into evidence.

In a judicial proceeding, the court is required to consider the marks as presented for registration in order to determine likelihood of confusion. In this case the Trademark Trial and Appeal Board concluded that there was likely confusion between the two ropes. It seems likely the Trademark Trial and Appeal Board might have come to a different result if the parties would have presented samples of their marks. Then the Court would have been permitted to consider the marks not as presented as for registration, but rather as they appeared in the marketplace.

This problem could have also occurred in the Qualitex case because the trademark application required Qualitex to designate either green or yellow/gold. Competitors would have not been able to determine the exact shade of the Qualitex press pads by making an inquiry at the PTO, because the trademark application would not have given any information about the ratio of green and gold colors used by Qualitex. It is possible the trademark covered all green-gold shades in the marketplace from mostly green to mostly gold.63

In contrast, by using a color sample and the correspondent RAL number (or PANTONE number) the German system achieves very precise representation of the color. Precise representation is especially useful to avoid a case like Amsted Industries Inc. v. West Coast Wire Rope & Rigging Inc.64 and also to provide sufficient notice to enable a competitor to choose a dissimilar color. However, the representation of a color is not of such importance in the United States, because the trademark right revolves upon use rather than upon registration as in Germany. Thus, in the United States a sign does not have to be registered in order to become a trademark. The registration becomes only of importance if a party wants to claim an infringement.

b. Secondary meaning

As stated previously the German and the US systems differ regarding the requirement of secondary meaning. According to the decisions after Qualitex, in the US a color needs secondary meaning regardless whether the color is descriptive, suggestive, arbitrary, or fanciful. In Germany secondary meaning is only necessary if the color is not distinctive.

The comparison between the two systems raises the question of whether the requirement of secondary meaning is necessary to grant trademark protection to a color or color combination. Because both Supreme Courts stated a color enjoys trademark protection if the ordinary requirements are fulfilled, one must ask whether color, in contrast to other signs, must fulfill the additional requirement of secondary meaning in order to enjoy trademark protection. To put it differently, whether color differs from the other types of signs, so that use of color always requires a showing of secondary meaning.

It is doubtful that colors are always descriptive or that a particular color always conveys an immediate idea of the ingredients, qualities or characteristic of the good it is used to represent. In the case where the color is descriptive, for example orange for orange juice, the German system and the US system arrive at the same result. Both systems require a showing of secondary meaning. The German system requires it because the color has no distinctive character, and the US system requires it because the category of descriptive marks always needs a showing of secondary meaning.

Both systems come to a different result where suggestive, arbitrary, or fanciful color trademarks are involved. For suggestive, arbitrary, or fanciful color trademarks, the German system would recognize the distinctive character, so that a showing of secondary meaning would not necessarily be required. On the other hand, the US system would need a showing of secondary meaning regardless of the type of trademark, since the trademark is a color.

This author can not imagine why color can not be suggestive, arbitrary, or fanciful. As mentioned above it is difficult to understand, why the Court in Qualitex Co. v. Jacobson Products Co. regarded the green-golden color of the press pads as descriptive since the color did not convey an immediate idea of the ingredients, qualities or characteristics of the press pads, and also because the color was specifically developed for use as a trademark. Even when a color is suggestive, arbitrary or fanciful, there is no reason why color should differ from other types of trademarks and need the additional showing of secondary meaning.

III. In Japan

In contrast to the United States and Germany, the statutory language in Japan does not allow the protection of color as a trademark. Although color may be part of a product's trade dress and a feature of the mark, a single color can only be protected under Article 265 of the Japanese Unfair Competition Prevention Law. The issue whether color enjoys protection had been discussed in the case Sanyo v. Twin Bird Manufacturing Co.66

1. Sanyo v. Twin Bird Manufacturing Co.

The plaintiff Sanyo manufactured and sold electronic household equipment. Since those electronic appliances were especially designed for a single household, the customer base was comprised of predominantly students. The different electronic appliances of the line were all colored in blue. The plaintiff claimed infringement of the Unfair Competition Prevention Law, alleging the defendant Twin Bird Manufacturing Co. had copied Sanyo's electronic appliances in producing household equipment colored in blue.

The court dismissed the plaintiff's motion and concluded the color blue had neither acquired a function that indicates the origin nor had it become widely known. The court reasoned that it is possible that a color could indicate the origin of a product, although these cases would normally be rare. The court was able to imagine that a consumer, by looking at the color of a product, would recognize the product was related to a particular company. A precondition for that assumption would be that the color is strongly connected with the product of a particular company. The court emphasized, however, color has always been free and could always be used by anyone. The color navy-blue was a common color, but had been used by the plaintiff for a long time. Although plaintiff's color might have acquired the function of indicating the origin of the product, the court denied protection under the Unfair Competition Prevention Law. The denial was based on the belief that exclusive use of a single color would lead to an unjust disturbance of market competition. An exclusive right to use a color would narrow the choice of colors for other companies. Ultimately, the last competitor to enter the market would find no color available to use for his product. The court also made clear that this rule would not apply if a color combination were involved.

2. Conclusion

The decision shows that although the court denied protection for a single color under the respective facts, the Japanese Court is generally willing to grant protection under the Unfair Competition Prevention Law. It seems that the reasoning of the Japanese court is quite similar to the old view of the U.S. courts regarding the color depletion theory.

However, it should be pointed out that the requirements for granting protection under the Unfair Competition Law are not as strict as the requirements for trademark protection. Whereas the protection of a trademark is dependent on formal requirements such as registration, protection requires only actual danger of confusion and wide knowledge of the origin of the product under the Unfair Competition Prevention Law. Whether an unregistered mark or indication is distinctive is defined by the same principles that have been developed under the Trademark Law for registered marks. The only difference is that distinctiveness in Trademark Law is determined based upon the registered mark pictured or described in the application documents. Under the Unfair Competition Prevention Law, the actual marks or indications used are compared in order to determine distinctiveness. However, these are only a few of the differences between the Trademark Law and the Unfair Competition Prevention Law.

An overview of the protection of color in Japan shows that there is no trademark case where the protection of color or color combination is an issue. According to the statutory language, only a color combination with configuration can enjoy trademark protection. Color combination without configuration as well as a single color can not be registered under the Japanese Trademark Law. The Japanese Trademark Law complies with the trademark term of Section 2, Article 15 (1) of the TRIPS Agreement, which includes in its terms the phrase "color combination." However, it should be emphasized, the statutory language of the TRIPS Agreement seems to grant trademark protection not only to color combinations with configuration but also to color combinations without configuration.

Examining the issue of the protection of a single color in Japan raises the question whether that nation might change its trademark law and include color in the Article 2 definition of trademark. Considering that the United States and Germany also now protects a single color under their Trademark Law, and considering that Japan is a member of the TRIPS Agreement, Japan should amend its Trademark Law and include color in its definition of trademark. This expectation is supported by the lack of criticism within Germany or the U.S after their allowing color trademark protection.

D. Conclusion

It can be concluded the United States as well as Germany grant, in contrast to Japan, trademark protection to a color and color combination without configuration. Each of these interpretations have been approved by the Supreme Courts of each nation. However, the requirements for granting such a protection to a color or color combination differ in Germany and in the US.

The requirement of graphic representation differs between Germany and the United States. The US system does not take account of the hundreds of shades available for appropriation, since the rules and practices do not provide a method to specify particular color shades or hues apart from the colors designated on the application.

Since the Japanese trademark law is based, as is German trademark law, on the "first to file" rather than on the "first to use" system, the graphical representation of a color will be of importance in Japan, if Japan amends its Trademark Law. The system used in Germany would be a good system to introduce in Japan, since it achieves a very precise representation of the color by using a color sample and the correspondent RAL number (or PANTONE number). Precise representation is especially useful to avoid a case like Amsted Industries Inc. v. West Coast Wire Rope & Rigging Inc.67 and to provide information and notice to competitors so that they are able to choose a dissimilar color for their product.

As stated above, the German and the US systems also differ regarding the requirement of secondary meaning. According to the decisions after Qualitex, a color needs a secondary meaning regardless whether the color is descriptive, suggestive, arbitrary, or fanciful. In Germany secondary meaning is only necessary if the color is not distinctive.

As mentioned previously, it is doubtful that colors are always descriptive, that a color always conveys an immediate idea of the ingredients, qualities or characteristic of the good. Although the German and the U.S. system come to the same result where descriptive marks are involved, they come to different results where suggestive, arbitrary or fanciful color trademarks are involved. For suggestive, arbitrary or fanciful color trademarks, the German system would recognize the distinctive character, so that a showing of secondary meaning would not necessarily be required. On the other hand, the US system would need a showing of secondary meaning regardless of the type of trademark, since the trademark is a color.

This author can not imagine why color can not be suggestive, arbitrary or fanciful. As mentioned previously it is difficult to understand why the Court in Qualitex Co. v. Jacobson Products Co. regarded the green-golden color of the press pads as descriptive, since the color did not convey an immediate idea of the ingredients, qualities or characteristics of the press pads, and was specifically developed for use as a trademark. Even when a color is suggestive, arbitrary or fanciful, there is no reason why color should be treated differently from other types of trademarks. In particular there is no need for the additional showing of secondary meaning. Japan, therefore, should not adopt the U.S. system regarding the requirement of secondary meaning when amending the Trademark Law. However, the requirement of secondary meaning could also be used as a tool to reduce the amount of stock trademarks in Japan. Since the amount of single color trademarks with distinctiveness is relatively small, the requirement of secondary meaning would prevent the registration of stock trademarks and avoid the threat of color depletion. Such a consideration would apply only for the registration of a single color, not for the registration of a color combination. Color combinations would be permitted since the number of imaginable color combinations is by far larger than the number of single color shades.

___________________________

* Ms. Caldarola is a German Attorney and a Doctoral Candidate at the Max Planck Institute in Munich.

1 GRUR Int. 1994, 128, 131.
2 Lanham Act § 45, 15 USC § 1127, as amended in the Trademark Law Revision Act of 1988 ("TLRA"), Public Law 100-667.
3 Lanham Act § 2, 15 USC § 1052:
Exceptions which can not be trademarked include:
(a) marks which are immoral, deceptive, or scandalous matter; or marks which are disparaging to "persons, living or dead, institutions, beliefs, or national symbols;
(b) marks consisting of a flag or coat of armor;
(c) marks consisting of the name, portrait, or signature identifying a particular living individual of a deceased President (during the life of his widow);
(d) marks similar to a registered mark which are likely to cause confusion;
(e) marks which are: (1) descriptive or deceptively mis-descriptive; (2) geographically descriptive; (3) geographically deceptively mis-descriptive; or (4) a surname;
(f) except as expressly excluded in paragraphs (a), (b), (c) and (d) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Commissioner may accept a prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made
4 Minnesota Mining & Mfg. Co., 335 F. 2d 836, 142 U.S.P.Q 366 (CCPA 1982).
5 Registration No. 548, 458 (September 18, 1951).
6 Gem. § 3 Abs. 1 MarkenG
können alle Zeichen, insbesondere Wörter einschlißlich Personennamen, Abbildungen, Buchstaben, Zahlen, Hörzeichen, dreidimensionale Gestaltungen einschließlich der Form einer Ware oder ihrer Verpackung sowie sonstige Aufmachungen einschließlich Farben und Farbzusammenstellungen geschützt werden, die geeignet sind, Waren oder Dienstleistungen eines Unternehmens von denjenigen anderer Unternehmen zu unterscheiden.
7 Martin Auenanger, Markengesetz/The German Trade Mark Act of 1995, VCH 1994.
8 Amtliche Begründung zum Entwurf eines Gesetzes zur Reform des Markenrechts und zur Umsetzung der Ersten Richtlinie 89/104/EWG des Rates vom 21. December 1988 zur Angleichung der Rechtsvorschriften der Mitgliedsstaaten über die Marken Bl. f. PMZ 1994, Sonderheft p. 45, 59; Fezer, Markenrecht, 1997, 1759, 1775
9 Joint statement by the Council and the Commission of the European Communities entered in the minutes of the Council meeting, on the first Council Directive approximating the laws of the Member States on trademarks adopted on 21 December 1988, Abl. EG No. L 40/1.
10 First Council Directive approximating the laws of the Member States on trademarks adopted on December 21, 1988 (89/104/EWG), Fezer, Markenrecht, 1997, 1975, 1977.
11 Trademark Law, Law No. 127 of 1957, Art. 2; Translation by Kenneth Port, Japanese Trademark Jurisprudence p. 115.
12 Qualitex Co. v. Jacobsen Products Co., 115 S. Ct. 1300, 34 U.S.P.Q. 2d (BNA) 1161 (1995).
13 Lawrence B. Ebert, Trademark Protection In Color: Do It By Numbers!, Trademark Rep., 379 (1994); Lawrence B. Ebert, The Supreme Court Decision in Qualitex v. Jacobson - A Comment, TRADEMARK REP., 100 (1995); J. Christopher Carraway, Color As A Trademark Under The Lanham Act: Confusion In The Circuits And The Need For Uniformity, 57 - AUT LAW & CONTEMP. PROBS., 243, 262 with further references; Jeffrey M. Samuels and Linda B. Samuels, Protection For Color Under U.S. Trademark Law, 23 AIPLA Q.J. 129, 148; Daniel C. Hudock, Qualitex Co. v. Jacobson Products Co.: Color Receives Trademark Protection And The Courts Receive Confusion, 16 J.L. & COM., 139,150; Kevin M. Jordan and Lynn M. Jordan, Qualitex C. v. Jacobson Products Co., The Unanswered Question - Can Color Ever Be Inherently Distinctive? TRADEMARK REP., 371 (1995); Laura R. Visitine, The Registrability Of Color Per Se As A Trademark After Qualitex Co. V. Jacobson Products Co., 40 ST. LOUIS U. L. J., 611 (1996); David B. Tongg, The Qualitex Quandary: Was Trademark Protection For Color Per Se Clearly Resolved?, U. HAW. L. REV., 445 (1996); Anthony V. Lupo, The Pink Panther Sings The Blues: Is Color Capable Of Trademark Protection?, 1 FED. CIRCUIT B.J., 47 (1991)
14 Qualitex Co., 115 S.Ct. 1300.
15 Campbell Soup Co. v. Armour & Co., 175 F. 2d 795, 81 U.S.P.Q. 430 (3d Cir. 19949), cert. denied, 338 U.S. 847, 94 L.Ed. 518, 70 S.Ct. 88, 83 U.S.P.Q. 543 (1949).
16 Anthony v. Lupo, The Pink Panther Sings The Blues: Is Color Capable Of Trademark Protection, 1 FED. CIRCUIT B.J. 47, 49 (1991).
17 Owens-Corning Fiberglas Corp., 774 F. 2d 1116, 227 U.S.P.Q. 417 (Fed. Cir. 1985).
18 The Nutrasweet Company v. The Stadt Corp. and Cumberland Packing Corp., 917 F. 2d 1024 (7th Cir. 1990).
19 Master Distributors Inc. v. Pako Corporation, 777 F. Supp. 744 (U.S. Dist. MN, 4th Div. 1991).
20 Qualitex Co., 115 S. Ct. at 1300.
21 Qualitex Co. v. Jacobsen Products Co., 21 U.S.P.Q. 2d 1 at 457.
22 Qualitex Co. v. Jacobsen Products Co., 62 USLW 2434, 29 U.S.P.Q. 2d 1277
23 Qualitex Co., 115 S. Ct. 1300.
24 Qualitex Co. v. Jacobsen Products Co., 514 U.S. 159, 161; 115 S.Ct. 1300, 34 U.S.P.Q. 2d (BNA) 1161 (1995).
25 Id. at 159, 164.
26 Id. at 159, 167.
27 Id. at 159, 168, 169.
28 Id. at 159, 173, 174.
29 Id. at 159, 173.
30 Qualitex Co. v. Jacobsen Products Co., 514 U.S. 159, 115 S.Ct. 1300, 130, 334 U.S.P.Q. 2d (BNA) 1161 (1995).
31 Generic marks are for example aspirin (Bayer Co. v. United Drug Co., 272 F 505 (SDNY 1921) and cellophane {DuPont Cellophane Co. Inc. v. Waxed Products Co. Inc., 85 F 2d 75, 30 USPQ 332 (CA 2 1936), cert. denied 229 US 601 (1936).}
32 Bufferin as an example of an descriptive mark {Bristol Myers Co. v. Pharmaco Inc., 291 F 2d 756, 130 U.S.P.Q 220 (CCPA 1961).}
33 American Home Products Corp. v. Johnson Chemical Co. Inc., 589 F 2d 103, 200 U.S.P.Q 417 (CA 2 1978), Norwich Pharmacal Co. v. Chas. Pfizer & Co. Inc., 165 U.S.P.Q 644 (TTAB 1970).
34 Orange Crush Co. v. California Crushed Fruit Co., 297 F 892, 893 (DC 1924); American Home Products Corp. v. Johnson Chemical Inc., 589 F 2d 103, 200 U.S.P.Q 417 (CA 2 1978).
35 Polaroid Corp. v. Polaraid Inc., 319 F 2d 830, 138 U.S.P.Q. 265 (CA 7 1963), Kotabs Inc. v. Kotex Co., 50 F 2d 810, 10 U.S.P.Q. (CA 3 1931) cert. denied 284 US 665, 52 S Ct. 41, 76 Led 563 (1931).
36 Kevin M. Jordan and Lynn M. Jordan, Qualitex C. v. Jacobson Products Co., The Unanswered Question - Can Color Ever Be Inherently Distinctive? TRADEMARK REP., 371 (1995); Laura R. Visitine, The Registrability Of Color Per Se As A Trademark After Qualitex Co. V. Jacobson Products Co., 40 ST. LOUIS U. L. J., 611 (1996); David B. Tongg, The Qualitex Quandary: Was Trademark Protection For Color Per Se Clearly Resolved?, U. HAW. L. REV., 445 (1996); Anthony V. Lupo, The Pink Panther Sings The Blues: Is Color Capable Of Trademark Protection?, 1 FED. CIRCUIT B.J., 47 (1991).
37 Qualitex Co., 514 U.S. at 159.
38 Jordan and Jordan, supra note 36 at 371.
39 Mana Products Inc. v. Columbia Cosmetics Mfg. Inc., 65 F.3d 1063; Knitwaves Inc. v. Lollytogs Ltd. (Inc.) d/b/a French Toast, 71 F.3d 996; Fabrication Enterprises Inc. v. The Hygenic Corporation, 64 F.3d 53; I.P. Lund Trading ApS and Kroin Inc. v. Kohler Co. and Robern Inc., 163 F.3d 27; Landscape Forms Inc. v. Columbia Cascade Company, 70 F.3d 251; Pebble Beach Company v. Tour 18 I Limited v. Golforms Inc., 155 F.3d 526; Marketing Displays Inc. v. Traffix Devices Inc., 971 F. Supp. 262.
40 Mana Products Inc., 65 F. 3d at 1071.
41 Knitwaves Inc., 71 F. 3d at 996; Fabrication Enterprises Inc., 64 F. 3d at 53.
42 Möhring, Hausfarben und ihre rechtliche Bedeutung, MA 1950, 139; Blasendorf, Farbwirkung und Farbenschutz, GRUR 1954, 294; Tetzner, Der wettbewerbsrechtliche Schutz von Farben und Werbemethoden, WRP 1956, 93; Tietze, Farben unter Kennzeichenschutz, GRUR 1959, 410; Uetscher, Der Farbenschutz im Kennzeichenrecht, Mitt. 1959, 293; Schulze zur Wiesche, Der Schutz der Farbe oder farbigen Aufmachung durch den § 25 WZG, GRUR 1965, 129; Hefermehl, Zum Schutz der Farbe als Kennzeichnungsmittel,Festschrift für Phillip Möhring 1965, 225.
43 BGH June 30, 1967 in GRUR 1968, p. 371 - Maggi.
44 WzBl II 1995, 4106, 4199, German Trademark 2906959
45 Hefermehl, Zum Schutz der Farbe als Kennzeichnungsmittel,Festschrift für Phillip Möhring 1965, 225.
46 Hefermehl, Zum Schutz der Farbe als Kennzeichnungsmittel,Festschrift für Phillip Möhring 1965, 225.
47 BGH June 30, 1967 in GRUR 1968, p. 371 - Maggi.
48 Stefan Völker/Jörg Semmler, Markenschutz für Farben und Farbkombinationen, GRUR 1998, 93, 101; Detlef von Schultz, Die Farbmarke ein Sündenfall, GRUR 1997, 714, 720.
49 Amtliche Begründung zum Entwurf eines Gesetzes zur Reform des Markenrechts und zur Umsetzung der Ersten Richtlinie 89/104/EWG des Rates vom 21. December 1988 zur Angleichung der Rechtsvorschriften der Mitgliedsstaaten über die Marken Bl. f. PMZ 1994, Sonderheft p. 45, 59; Fezer, Markenrecht, 1997, 1759, 1775.
50 Winkler, Erfahrungen des DPA mit dem erweiterten Markenbegriff, MA , 516, 517 (1996).
51 BPat GRUR 1996, 881 "Farbmarke"; BPatG GRUR 1999, 61, Aral/Blau I.
52 BGH WRP 1999, 430 "Farbmarke gelb/schwarz"
53 The Deutsches Institut für Gütesicherung und Kennzeichnunge.V. has published a compilation of 190 different colors that have been exactly determined by number. There exists another system, which is called PANTONE and which is also used internationally. In contrast to the RAL numbers this compilation is not used for lakes but rather for paper colors. The use of a RAL number is not obligatory to the applicant.
54 Joint statement by the Council and the Commission of the European Communities entered in the minutes of the Council meeting, on the first Council Directive approximating the laws of the Member States on trade marks adopted on 21 December 1988, Abl. EG No. L 40/1.
55 First Council Directive approximating the laws of the Member States on trademarks adopted on 21 December 1988 (89/104/EWG), Fezer, Markenrecht, 1997, 1975, 1977.
56 Abl. (HABM) 1998, 898, 900.
57 Dieter Stauder, Amtsprüfung und Farbenschutz im französischen Markenrecht, GRUR Int. 1976, 116.
58 BGH WRP 1999, 430 "Farbmarke gelb/schwarz"
59 Section 8 (1): "Signs which are capable of being protected as a trade mark within the meaning of Section 3 but which cannot be represented graphically shall not be registered."
60 GRUR 1999 61, 63 - Aral/Blau I.
61 37 C.F. R. § 2.52 (e) (1995).
62 Amsted Industries Inc. v. West Coast Wire Rope & Rigging Inc., 2 U.S.P.Q 2d (BNA) 1755 (T.T.A.B. 1987).
63 Paige Stratton Bass, Trademark law: Qualitex Co. v. Jacobson Products C. - The Supreme Court Upholds Trademark Protection For A Color, OKLA. L. REV., 193, 203 - 205 (1996).
64 Amsted Industries Inc. v. West Coast Wire Rope & Rigging Inc., 2 U.S. P.Q 2d (BNA) 1755 (T.T.A.B. 1987).
65 The Unfair Competition Law in Article 2 (1) (i) states:
1. As used in this Act, "unfair competition" means any of the following acts.
(1) The act of using an indication on goods or other indications (for the purpose of this Act, "indication on goods or other indications" means a name, trade name, trademark, mark, container or package of goods which is related to a person's business, or any other goods or business indications) which are the same as, or similar to, another person's indication on goods or other indications which are widely known among users; or the act of transferring, delivering, displaying for the purpose of transfer or delivery, exporting, or importing goods which use such an indication on goods or other indications, thereby causing with another person's goods or business...
66 Judgment of May 30, 1995, Osaka District Court, 1545 Hanrei Jiho 84; Other case related to this matter: Shimomura Shoten Co. Inc. v. Hirao Kaken Co. Inc., Judgment of June 29, 1966 Osaka District Court, 17 Kaminshu 562.
67 Amsted Industries Inc. v. West Coast Wire Rope & Rigging Inc., 2 U.S. P.Q 2d (BNA) 1755 (T.T.A.B. 1987).

Last updated 4/27/2012