A certain paint manufacturer develops, produces and sells paints, including under its own well-known Sigma brand. The other party is an interior designer who has also developed a paint line under its own and registered brands. This collection consists of 16 colors inspired by nature.
The paint manufacturer has placed hundreds of paint mixing machines at paint stores across the country. At the request of professionals and consumers, paint can be mixed to the desired color in such a machine. In the computer program linked to the paint mixing machine, among other things, the 16 colors that are part of the interior designer’s collection can be chosen, as well as colors from other fellow paint manufacturers. If chosen, a small label is printed indicating the interior designer’s or fellow paint manufacturer’s brand and the name of the color in question. This small label is then affixed by the retailer to the paint can on which the paint manufacturer’s Sigma brand is stated in large letters.
The interior designer claimed trademark infringement. The paint manufacturer invoked permissible referenced trademark use in accordance with honest practices in trade and industry. In fact, it has been common practice in the paint industry for decades to mix paint based on color charts from the paint manufacturer itself or from other paint manufacturers and then – for the customer’s clarity – the name of the color is mentioned on a label affixed to the paint can.
The court leaves this question open but holds that there is no trademark infringement since the element of likelihood of confusion on the part of the customer is missing. The interim relief judge stated, “It is not plausible that professional buyers and consumers who visit a paint store where Sigma paint is sold and who have Sigma paint mixed in a color of their choice will be confused, in the sense that they will think they are buying paint produced by or from the interior designer. To the average buyer/consumer who chooses a color from the interior designer in a paintstore it is clear that the paint he or she is buying is Sigma paint. The Sigma brand is also clearly stated on the paint can. It is likely that he or she understands that the label with the interior designer’s brand and color is merely an indication of the (self-selected) color of the paint and not the brand of the paint itself.”
The interior designer’s claims were dismissed to the delight of several paint manufacturers (including my client) who followed this case with interest.
