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25 Jun 2010

Whiskas purple colour mark gets up in Federal Court

by Mary Still, Brett Doyle

Mars worked hard to give the Whiskas colour the capacity to distinguish its products from those of other traders.

Having invested a lot of time, money and effort into creating a brand identity, can you successfully register a particular colour as a trade mark under the Australian Trade Marks Act? Yes, as the recent decision involving the colour purple and Whiskas cat food shows (Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA [2010] FCA 639).

Mars, the owner of Whiskas, developed a particular shade of purple, Whiskas Purple (CMYK: cyan 40%, magenta 100%), and began applying it to the Whiskas range of cat food packaging and collateral marketing materials. It then applied to register the Whiskas purple colour as a trade mark.

Nestlé initially opposed the registration, but later dropped its opposition in the final stages of the Federal Court appeal. Justice Bennett in the Federal Court still had to consider if the Whiskas colour purple was capable of distinguishing Whiskas products either because:

  • it was, or was to some extent, inherently adapted to distinguish Whiskas cat food from other brands of cat food; or
  • if the mark was not inherently adapted to distinguish, the evidence established that the trade mark did in fact distinguish Whiskas products as at the filing date and was therefore capable of distinguishing those goods.

Why did Whiskas purple function as a trade mark?

Justice Bennett found that at there was evidence that Whiskas Purple was at the application date capable of distinguishing Mars’ goods:

  • Whiskas Purple was an invented colour, designed specifically for Mars for its cat food range;
  • Whiskas Purple and its association with Whiskas was extensively promoted and advertised before and after the application date, with the clear intention of giving that colour a trade mark significance, that is, to have it act as a badge of origin
  • the use of purple by other traders on pet food had not been trade mark use, but mostly had been to indicate different varieties within a product range, and registration would not prevent such non-trade mark use by other traders in the future
  • other traders acting without improper motive would not be likely to want to use that shade of purple, or some colour nearly resembling it, upon or in connection with their own goods in any manner that would infringe the Mars mark
  • a survey in May 2009 indicated that Whiskas Purple did function as a trade mark, a badge of origin by which consumers identified Mars’ goods as against the goods of other traders.

What does this mean for brand owners?

The protection given to colour marks is still relatively new in Australia, and has at times given rise to very public disputes, most notably, Cadbury's (as yet unsuccessful) attempts to gain exclusivity over use of the colour purple for chocolate.

This decision should act as an encouragement to brand owners to consider protecting non-traditional marks such as colour and shapes. Nevertheless, registration of a single colour as a trade mark will not be easily obtained and it will be critical for applicants to develop a strategy that will ensure that distinctiveness can be proven.

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Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this communication. Persons listed may not be admitted in all States and Territories.