21 Jun 2011

Colour trade marks

by Brett Doyle

Ordinary experience, history and literature all tell us that colours operate as powerful stimulants of memory, identification and loyalty.[1]

In recent times, trade mark rights in colours, especially in the colour purple, have been the subject of regular reports in the popular press. There were the long-running but ultimately unsuccessful attempts by Cadbury to prevent Darrell Lea from using the colour purple in relation to chocolate products.[2] Most recently, the Mars group was successful in registering the colour purple for cat food over the objections of Nestlé.[3]

These and other recent cases have advanced the jurisprudence in relation to use of colour “as a trade mark” and the issue of distinctiveness of colours for different products categories. The decisions themselves can only be properly understood by considering closely these twin issues.

This article examines the legal principles underlying colour trade marks. It concludes that the proper application of established trade mark concepts will require that they need to be confined to their area of distinctiveness because they will be scrutinised by the Registrar, the courts and competitors. As yet, however, their legal effectiveness in an action for infringement remains untested.

Historical development

The recent legal battles have often been presented as if the issues involved were completely new or even revolutionary. Certainly they had novel and important aspects; however, colour trade marks have been around for a very long time. Of the “non-traditional” trade marks (colour, smell, sound, aspect of packaging), colour marks are the least novel and have the longest pedigree, at least in terms of registered monopolies under trade mark legislation.

These so-called non-traditional trade marks came to prominence with the definition of “sign” in the Trade Marks Act 1995 (1995 Act). Previously, the Trade Marks Act 1955 (1955 Act) had defined a trade mark in a non-exclusive way as “including a device, brand, heading, label, ticket, name, signature, word, letter or numeral, or any combination thereof” — section 6 of the 1955 Act. The 1955 Act clearly intended that colour could be one element within a mark because a series application could include colour variants (section 39). This suggested that colour per se was unlikely to be highly distinctive as the other permissible variations within a series could not “substantially affect the identity” of the mark (section 39(1)(c)). Nonetheless, the 1955 Act also acknowledged the distinctive capacity of colour by requiring that a limitation to a certain colour or colours be taken into account in assessing distinctiveness (section 27(1)). Under even earlier Australian legislation, colour trade marks had achieved registration. For example, in 1934 a colour trade mark for taxis was registered with the following endorsement:

"The trade mark consists in the distinctive marking of a taxi-cab in the following manner: the top, guards valances and wheels are coloured light green; the body and bonnet cream; the words “Green Cab Service” appear on the panel of the front doors."[4]

Nevertheless, there was generally a great reluctance to accord rights in aspects of products that were considered to be inherent to the goods themselves. In the case of shapes, this famously led to the refusal to register the Coca-Cola bottle for soft drinks, despite its acknowledged distinctiveness. The Coca-Cola bottle shape was not a “mark” at all and so could not be a trade mark.

Whiskas

Colour trade marks, as we have seen, fared somewhat better. They only tended to “an undesirable monopoly in colours” and not in the goods themselves.[5]These comments expressed the general feeling of unease about granting monopoly rights over colours. This unease persists and no doubt has contributed to the tone of surprise, astonishment and even outrage in some recent press articles about colour trade marks, whether that be at Cadbury's boldness in trying to stop Darrell Lea from using purple or at the Registrar granting Whiskas a statutory monopoly over purple. It is also, no doubt, the reason that Bennett J felt it necessary or advisable to provide some useful comments in the Whiskas case, beyond what was necessary given the resolution of the opposition by agreement of the parties. The comments are however expressly only “observations[6]

The issue of exclusive rights to colours becomes most problematic when a single colour is applied to the surface of the goods themselves and the “owner” claims rights in that colour per se or when a single colour claim is made in relation to services. From the 1995 Act it is, however, quite clear that colour “may be a sign in its own right and not merely as an element of another species of sign such as a logo or aspect of packaging”. [7]

There is no statutory basis to discriminate in principle between colour marks for goods and colour marks for services, though they raise somewhat different practical issues. Generally it will be easier to establish rights in a single colour for goods than services but this does not mean that it will be easy for goods marks. Often an ex parte hearing before the Registrar will be necessary to secure initial acceptance, as was the case in Veuve Cliquot's application for the colour orange for champagne.[8]

Sometimes an appeal to Federal Court from an adverse Registrar's decision may be necessary, as in the case of the colour terracotta for non-metallic irrigation pipes.[9] In some cases, even an application for a colour, unusually deployed, will proceed without evidence of distinctiveness, as with the colour pink applied to the surface of light gloves for charitable fund raising.[10]

Colour combinations such as the Commonwealth Bank's registrations for the colours black and yellow are more easily registered.[11]This is because the number of combinations of colours is greater and because it is less likely that goods or services will need to be coloured in such a way by competitors. Moreover, colour combinations generally will not have a “descriptive” function or some other non-trade mark signification: for example, red is universally the colour of bank withdrawal slips and blue is the colour of deposit slips.

Single colours, unless they are unusual for the product (“out of left field", as it was put in Philmac[12], are the most difficult to register. Even so, a limited number of single colour marks were registered on the basis of use prior to the 1995 Act. The fundamental requirement for all marks is that they must be “capable of distinguishing” to qualify for registration under the 1995 Act. Marks devoid of any inherent ability to function as trade marks must be factually distinctive to qualify for registration. The Registrar generally treats single colour marks as falling into this category, though there are exceptions.[13]

Registration will therefore typically proceed under section 41(6) where the Applicant needs to establish factual distinctiveness at the date of application. Almost invariably, this is established by reason of use. Colour combinations are not generally considered to be inherently unsuited to function as trade marks and less extensive use than is usually required to satisfy the Trade Marks Office.[14]

Some related concepts

The concepts of “distinctiveness” and “use as a trade mark” are therefore critical. Though different they are closely related. Distinctiveness is the outcome of the use “as a trade mark” of a sign that is capable of acquiring a secondary meaning, that is, of distinguishing one trader's goods or services from those of others. Though this proposition seems somewhat circular, it is clear that distinctiveness is the statutory equivalent of the common law concept of secondary meaning that underlies the three elements of the common law action for passing off: reputation/goodwill, misrepresentation and damage or likely damage.

Distinctiveness and secondary meaning are easily confused but they are not always the same. When considering whether BP was entitled to registration of the colour green for petrol and related services, Finkelstein J at first instance found that a secondary meaning had been established in green as part of BP's overall get-up.[15] Heerey, Allsop & Young, JJ upheld Woolworths’ appeal but subjected the facts that gave rise to the finding of secondary meaning to a different analysis. They held that the proper inquiry was not the more diffuse common law inquiry about secondary meaning in an overall get up but the precise statutory enquiry of section 41(6), namely, whether the colour green acted as a badge of origin, which was established by use of green as a trade mark.[16]

It seems that this type of diffuse and misdirected inquiry may easily suggest itself because the action for passing off is now often conceived as protecting “common law trade marks” when no such creatures exist. Passing off is an action to prevent damage to goodwill arising out of misrepresentation. Though it will often focus on a particular indicium that will generally fit the now expanded statutory definition of a “sign”, the action takes into account all the circumstances that may contribute to a misrepresentation.

The statutory action for infringement does not (at least under section 120(1)) take these circumstances into account but enforces the specific monopoly given by the particular registration irrespective of any actual misrepresentation or damage. Even for infringement under sections 120(2) & (3), the range of additional factors to be considered is limited and does not in the case of section 120(2) become a reverse passing off assessment.[17]

The point is that statutory trade marks are far more precisely defined rights than is business goodwill or reputation. Both statutory distinctiveness and common law secondary meaning are built up by use. In the case of statutory distinctiveness, the use must be use “as a trade mark” and in the case of secondary meaning, the effect must be to associate certain indicia of the product or business in the minds of the relevant target market with a single trade source.

The Full Court in BP made it quite clear that it is wrong to enquire about the distinctiveness of the overall get-up (unless this is mark applied for) and avoid the two pertinent questions for s 41(6): first, has the colour itself been used as a trade mark; and secondly, has that use rendered the colour mark as applied for distinctive.[18]

Distinctiveness

Colour trade marks are most commonly dealt with by the Trade Marks Office under sections 41(6) and 41(5) because there are particular factors that affect the ability of colours generally to indicate a single trade source. The colour depletion theory, which had found favour for some time in United States jurisprudence, argued that the range of colours was limited and that no trader should be able to monopolise a single colour because this would be an unreasonable fetter on other traders and would have the effect of inhibiting competition.

Such “competitive need” was ultimately held not to be an absolute bar to acquiring trade marks rights in single colours but only one factor, albeit an important one, to be taken into account. Mansfield J explicitly adopted this approach in Philmac.[19] He also considered other non-trade mark usages of colours that are important in trade. These include any utilitarian function, the ornamental function or some economic need for the goods to be of a particular colour.

In the Whiskas case, the various uses of the colour purple were considered and more particularly the types of uses that a trade mark registration could prevent. For pet foods, colours were often used to indicate product variants within a particular range. Whiskas, however, had the distinct advantage that its shade of purple was an “invented” shade developed especially for the Whiskas cat food range.

In effect the colour depletion theory and other reservations about colours as trade marks echo earlier apprehensions about “wealthy traders [who] are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure.” (Joseph Crosfield & Son's Application (1909) RPC 26 837 at 854). This warning of Fletcher-Moulton, LJ is balanced by his later comments that “long continued and extensive use as a trade mark … should, in ordinary cases, suffice to establish” the right to registration, provided that the mark is of the type that is capable of acquiring a secondary meaning.

Put another way, single colour marks (and colour combinations) must be marks that are capable of distinguishing one trader’s goods from those of others. In terms of the Full Federal Court decision in Caplets, they must be badges of origin capable of denoting a single source of a product, even if that source is not known.[20]

Use “as a trade mark”

Establishing distinctiveness (fitness for registration) through use as a trade mark requires an objective assessment of the purpose and nature of the use, though mixed purposes will not be fatal to distinctiveness understood as indicating a single origin.[21]

Shifting use can, however, cause problems. Often trade marks have a dynamic quality varying over time. This is especially true when the trade mark in question is a colour mark that forms part of the get-up or corporate livery of a trader. In BP’s case, the use of green had evolved over time in its application to service stations and as used by the business more generally. The trade mark applications in question arose out of a “re-imaging” of the BP brand that drew on the pre-existing uses of the colour green which had been a prominent and increasingly dominant colour for BP since the mid-1950s when the colour combination green and yellow was first adopted. However, yellow always remained a subsidiary colour and that would prove fatal to BP's applications for green per se.[22]

Because single colour marks are most commonly considered to fall into the section 41(6) category, they must be distinctive at the application date and so care must be taken to avoid two possible fatal errors. First, the mark in question cannot become distinctive after the application date; secondly, the application must clearly define the mark that has become distinctive because any amendment cannot alter the mark in any substantial way. In BP’s case, amendments to the applications refined the trade mark for which protection was sought but the changes, including from green alone to green as the predominant colour, altered the substance of the mark. Accordingly, these changes were impermissible.

Where service marks are in question, it will often be a case of disaggregating or isolating particular elements of a distinctive get-up or corporate livery in order to register a colour or colour combination. Good examples of this are the various registrations for taxi services where the colours are not distinctive except as applied to the taxis themselves. If the colour mark applied for is an element in an overall get up, that “disaggregated” mark must itself be separately distinctive.[23]

The Whiskas purple trade mark, now registered for “cat food and additives for cat food”, had certain advantages.[24]It was an invented colour, created in Europe “from scratch”, which had been “carefully chosen and the precise colour specifically developed in order to make a stronger brand identity”.[25] The dominant use of purple on the packaging produced a block effect on supermarket shelves. There had been substantial and presumably stable use since April 2000, which was only a relatively short period of time to establish factual distinctiveness given that the application date was November 2002. Furthermore, the colour was new to the Whiskas range, purple not having been used for any other purpose on the products. There was also a clear intention from the outset to give the colour a trade mark significance by creating “a stronger brand identity for Whiskas”. In part, this was achieved by the block of purple colour created when the product was ranged on supermarket shelves.

Importantly, Mars pointed out that registration would not prevent non-trade mark use of the colour, for example, for decorative purposes or to indicate variations in a product range. In Bennett J's opinion even similar shades of purple had been used, though Mars submitted that these were not for trade mark purposes and Bennett J did not disagree with this contention. Interestingly, the mark remained in the section 41(6) category but Bennett J accepted that a 2009 survey supported Mars contention that Whiskas purple functioned as a trade mark in November 2002. This may be an instance of recognising “actual events as capable of illuminating the probabilities already inherent in the situation from which they arose”.[26]

The final point to note about “use as a trade mark” is that Cadbury, despite holding a number of registrations for the colour purple, based its case against Darrell Lea on section 52 of the Trade Practices Act. One reason for this may have been that it was not considered that Darrell Lea was using purple as a trade mark (that is, to indicate source rather than, for example, merely as an attractive, rich or voluptuous colour) and so this necessary ingredient of the statutory infringement action could not be made out.

Conclusion

Colour trade marks are prized by traders and often feared by competitors. If carefully selected with an eye to their distinguishing ability and after careful use to indicate a trade source, registration may be possible.

There will be considerable hurdles. The pitfalls are many. First, the application must be properly framed. Secondly, the Registrar will require significant evidence of use establishing distinctiveness, often at the date of application. Thirdly, competitors may challenge registration in opposition proceedings before the Registrar and on appeal.

The success rate for colour applications remains poor. As at September 2010, there were only 240 trade marks with some colour aspect that had been registered; 633 lapsed or refused applications; 84 were pending. Colour registration may have a considerable in terrorem effect; however, the effective enforcement of these rights in infringement proceedings is untested.

 


[1] Heerey J in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 8) (2008) 75 IPR 557; (2008) ATPR ¶42-229; [2008] FCA 470; BC200802418 at [78].Back to article

[2] The Full Court of the Federal Court remitted the first instance decision of Heerey J for redetermination in the light of evidence excluded at trial (Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 159 FCR 397; 239 ALR 662; [2007] FCAFC 70; BC200703773). An attempt to have the Full Court order a new trial was unsuccessful (Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) ASAL 55-175; (2007) ATPR 42-175; [2007] FCAFC 102; BC200706004). The special leave application to the High Court on the new trail point failed (Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2007] HCATrans 468). Heery, J, after considering the additional expert evidence, found, as he had in his initial judgment (Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 4) (2006) 229 ALR 136; 69 IPR 23; [2006] FCA 446; BC200602559) that Darrell Lea's use of the colour purple was not misleading or deceptive or likely to mislead to deceive in breach of s 52 of the Trade Practices Act, 1974. See Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 8) (2008) 75 IPR 557; (2008) ATPR ¶42-229; [2008] FCA 470; BC200802418.Back to article

[3] Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA (2010) 86 IPR 581; [2010] FCA 639; BC201004225.Back to article

[4] See Registration 64780 in class 12. Query however whether class 12 goods (taxis) were in fact offered for sale under this trade mark or whether it was an attempt to protect this colour scheme for taxi services prior to the introduction of service classes.Back to article

[5] Re Coca Cola Trade Mark (1985) 3 IPR 575; [1985] FSR 315; [1986] RPC 421 at 458 (HL).Back to article

[6] Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA (2010) 86 IPR 581; [2010] FCA 639; BC201004225 at [24].Back to article

[7] Philmac Pty Ltd v The Registrar of Trade Marks (2002) 126 FCR 525; 56 IPR 452; [2002] FCA 1551; BC200207590 at [65].Back to article

[8] Re Application by Veuve Cliquot Ponsardin, Maison Fondé En 1772, (1999) 45 IPR 525; (1999) AIPC 91492. See Trade Mark Registration 704779.Back to article

[9] Philmac Pty Ltd v The Registrar of Trade Marks (2002) 126 FCR 525; 56 IPR 452; [2002] FCA 1551; BC200207590. See Trade Mark Registration 796572.Back to article

[10] See Registration 1172710 in the name of National Breast Cancer Foundation. “Trade Mark Description: The trade mark consists of the colour pink (as shown in the attached representation) applied to the surface area of a light globe.”Back to article

[11]See Trade Mark Registration 762225 and 762226.Back to article

[12]Philmac Pty Ltd v The Registrar of Trade Marks (2002) 126 FCR 525; 56 IPR 452; [2002] FCA 1551; BC200207590 at [67].Back to article

[13] For example, the colour lilac for chocolate (Trade Mark Registration 771390) was treated as having some capacity to act as a trade mark and proceeded under s 41(5). See also Trade Mark Examiners' Manual Pt 21: 4.3.Back to article

[14]Trade Mark Examiners' Manual, Part 21: 4.2.Back to article

[15] BP plc v Woolworths Ltd (2004) 212 ALR 79; 62 IPR 545; [2004] FCA 1362; BC200407020.Back to article

[16] Woolworths Ltd v BP plc (2006) 150 FCR 134; (2006) AIPC 92-190; [2006] FCAFC 52; BC200602426 at [81].Back to article

[17]Section 120(2) of the 1995 Act is expressed in similar terms to the so-called Part B defence under s 62(2) of the 1955 Act. In regard to the ambit of this defence to infringement, see Shanahan, Australian Law of Trade Marks & Passing Off (2nd ed.), Sydney: Law Book Company, 190, 340 ff, esp. 343.Back to article

[18]Woolworths Ltd v BP plc (2006) 150 FCR 134; (2006) AIPC 92-190; [2006] FCAFC 52; BC200602426 at [82].Back to article

[19] Philmac Pty Ltd v The Registrar of Trade Marks (2002) 126 FCR 525; 56 IPR 452; [2002] FCA 1551; BC200207590 at [61], [65].Back to article

[20]Re Johnson and Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310 per Lockhart, J [37], Burchett, J [5], Gummow, J [16]. Cited, approved and applied by Heerey, Alsopp, Young, JJ in Woolworths Ltd v BP plc (2006) 150 FCR 134; (2006) AIPC 92-190; [2006] FCAFC 52; BC200602426 at [76].Back to article

[21] Woolworths Ltd v BP plc (2006) 150 FCR 134; (2006) AIPC 92-190; [2006] FCAFC 52; BC200602426 at [77].Back to article

[22]BP subsequently has obtained registrations for the get-up of its service stations in combinations of green and yellow, and green, yellow and white — See registrations 728555, 728556, 744728, 861716 and 1118600.Back to article

Registration 1118600 is described as follows:

Trade Mark Description: Colour Claimed: GREEN (Pantone 348C), YELLOW (Pantone 109C) and WHITE (RAL 9016); Parts Colour Claimed: The colour GREEN appears principally on the canopy, pumps, shop fascia and main identification board; GREEN also appears with the colour YELLOW and/or WHITE on other component parts of the service station shown in the reproduction in box 7 and in the device element (the circular decal) in the centre of the canopy fascia and on the main identification board.; Mark Description: The mark consists of the colours GREEN (Pantone 348C), YELLOW (Pantone 109C) and WHITE (RAL 9016), the letters 'bp' and the device element in the representation attached hereto, applied to the exterior surfaces of buildings, canopies, pole signs, shop fascias and other component parts of service stations.*

By application 909518, BP is again seeking registration of the colour green alone as the predominant colour applied to certain parts of petrol stations.

[23]An example of this is BP's current application 1016694. ‘The trade mark is a green striplight (neon, LED or similar) affixed to the edge of the canopy over the petrol pumps at vehicle service stations as shown in the representation attached to the application form.* Provisions of s 41(6) applied.' Registration has been opposed by Woolworths.Back to article

[24]Registered Trade Mark 932937. “The mark is the colour PURPLE (CMYK: cyan 40%, magenta 100%) as shown in the representation attached to the application. Provisions of s 41(6) applied.”Back to article

[25] Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA (2010) 86 IPR 581; [2010] FCA 639; BC201004225 at [4], [25].Back to article

[26]Condé Nast Publications Pty Ltd v Virginia Taylor (1998) 41 IPR 505; [1998] FCA 864; BC9803402.Back to article

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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.