Qualitex Co. v. Jacobson Prods. Co.
514 U.S. 159 (1995)
Supreme Court of the United States
Brief Facts of the case:
- Petitioner (Qualitex) used a special shade of green-gold colour on the pads that is made and sold to dry cleaning firms for use on dry cleaning presses since 1950s.
- In 1989, Respondent started using a similar green gold colour on its press pads. Petitioner filed a suit for unfair competition against Respondent. Petitioner also registered its special green-gold colour with the Patents and Trade Marks Office in 1991.
- Petitioner added a trade mark infringement claim to its suit for unfair competition. Petitioner won before the District Court. However, the Court of Appeal reversed the decision by holding that the Lanham Act does not permit registration of ‘colour alone’ as a trade mark. The Courts of appeals across USA had different opinions on registrability of colour alone as trade mark.
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The Supreme Court of United States observed as follows:
- Both the language of the Act and the basic underlying principles of trademark law would seem to include colour within the universe of things that can qualify as a trademark.
- A colour is also capable of satisfying the more important part of the statutory definition of a trademark, which requires that a person use or intend to use the mark: “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.”
- But, over time, customers may come to treat a particular colour on a product as signifying a brand. And, if so, that colour would have come to identify and distinguish the goods – i.e. to indicate their source – much in the way that descriptive words on a product can come to indicate a product’s origin.
- There is no principled objection to the use of colour as a mark in the important “functionality” doctrine of trademark law.
- Sometimes colour is not essential to a product’s use or purpose and does not affect cost or quality. This indicates that the doctrine of “functionality” does not create an absolute bar to the use of colour alone as a mark.
- Qualitex’s green-gold press pad colour has become distinctive, is not functional and there is no requirement that there is non competitive need for the green-gold colour to remain available in the industry.
- Unless there is some special reason that convincingly militates against the use of colour alone as a trademark, trademark law would protect Qualitex’s use of the green-gold colour on its press pads.
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