In decisions by delegates of the Australian Trade Marks Office this year, 3M was denied registration of the colour 'canary yellow' in respect of POST-IT adhesive stationery notes and Cadbury was denied registration of the colour purple in respect of chocolate products.
Equality before the law
Although the Trade Marks Act (Act) provides a single test for registration of old trade marks (such as words and logos) and new trade marks (such as colours and shapes), the decisions made in both applications reflect the practice of the Trade Marks Office to treat new kinds of trade marks as special cases.
The delegate in the 'canary yellow' decision took the view that different criteria apply to old and new marks because it is easier to show that a word or logo mark is distinctive (as compared with a colour mark), as a word mark usually has some visual and aural elements and a logo mark has graphic components. A colour mark does not have these identifying features.
The recent decision of the Full Federal Court in Kenman Kandy v Registrar of Trade Marks refutes this practice and confirms that old and new trade marks should be treated equally. Although this case dealt with registration of the shape of a six-legged bug, the Court's comments regarding inherent registrability of trade marks apply to all kinds of marks, including colours.
As both the 'canary yellow' and 'purple' decisions have been appealed, the application of the principles established in the Kenman Kandy case to these colour marks is eagerly awaited.
Passing the registrability test
3M and Cadbury failed in their applications because each was unable to show, to the satisfaction of the delegate hearing the matter, that the relevant colour was associated exclusively with its product in the marketplace when each application was filed.
The colours were required for use by other traders
The first step in assessing a trade mark for registrability is to determine whether other traders in similar goods have a reasonable requirement to use the trade mark to refer to or describe their goods. In the case of colour marks, the criterion of functionality is applied to determine whether the colour is required for use by other traders.
A colour may be functional if it serves a functional purpose (eg, red to connote strawberry flavour or brown to connote chocolate flavour), or allows the user of the colour to gain a competitive advantage over traders in similar goods (eg, if it is cheaper to manufacture the product in the colour being considered than to manufacture it in other colours).
In finding that canary yellow is required for use in trade, the delegate considered that, given the number and variety of coloured paper products, there is a competitive need for other traders to be able to use all colours in respect of these products.
In the application to register the colour purple, the delegate concluded that, given it:
has connotations of imperial rank or brilliance
is not more difficult or expensive to produce than any other colour
could be used to indicate that chocolate has berries or other fillings
other traders are likely to want to use the colour purple on their confectionery products.
As a result of these findings, the applicants were required to prove that, at the date the trade mark applications were filed, the colours were associated exclusively with the applicants' goods in the marketplace.
Insufficient evidence of use to show exclusive association
The delegates said that, for colours to become distinctive of an applicant's goods, consumers must be educated to recognise a particular colour as a trade mark. This view rejects the notion that the mere appearance of a particular colour in relation to goods is sufficient for consumers to create an association between the colour and the trader's goods.
3M's evidence
Survey evidence filed by 3M was criticised as the survey did not refer to 'canary yellow', but to yellow generally, and did not indicate whether reference made by participants in the survey to 'post-it notes' was a reference to 3M's adhesive stationery notes or to adhesive stationery notes generally.
Cadbury's evidence
Cadbury filed evidence of use of purple packaging on its products and in printed materials since 1905, and the results of a market survey conducted after the filing date of the application.
The delegate rejected the argument that extensive use of the colour purple in relation to Cadbury's products was sufficient to show that the colour functioned as a trade mark in relation to the goods. According to the delegate, Cadbury had to show that, as a consequence of its use of the colour purple as a trade mark, 'its purple packaging has acquired a secondary meaning in addition to its ordinary meaning of being an attractive packaging for confectionery. That secondary meaning must be that of an indicator of trade source for members of the public'.
The delegate also found that use of the colour purple by Cadbury was 'passive' and not 'use' in a trade mark sense, and that the association between Cadbury and the colour purple should have been spelt out with phrases such as 'When you see the purple wrapper, you know it is Cadbury's' or 'Think purple, think Cadbury's'.
Considering the results of the market survey filed by Cadbury, the delegate took the view that consumers' perceptions may have been affected by marketing campaigns conducted after the trade mark application was filed, and concluded 'I am not satisfied that, at the date of filing, if consumers had seen a chocolate block in a purple wrapper, they would have known that colour as a Cadbury trade mark'.
Justice Stone in the Kenman Kandy case disputed the view that:
consumers ought to be educated to recognise that a shape (or colour) functions as a trade mark
showing that a trade mark has significations or associations that invite confusion renders the mark to no extent inherently distinctive.
Rather, Justice Stone said, the enquiry is a negative one, and that it is the absence of significations or associations that invites confusion that renders the mark inherently distinctive.
Is there a pot of gold at the end of the rainbow?
To succeed in an application to register a colour as a trade mark, one of two hurdles must be cleared.
First, registration may be secured if the applicant demonstrates that the colour is not required for use by other traders to describe their similar goods. The canary yellow and purple decisions indicate that, in the case of colour marks, it is virtually impossible to show that a colour has features that distinguish the goods to which it is applied.
However, the approach of the Court in the Kenman Kandy decision indicates that the mere appearance of a particular colour in relation to goods could create an association between the colour and the trader's goods.
If the first registrability hurdle is not cleared, the applicant has a second bite of the cherry and may be able to secure registration if the applicant is able to show that, as a result of use of the colour, the colour is associated exclusively with the goods to which the applicant applies the colour.
If the colour is functional or allows the applicant to gain a competitive advantage, the applicant will need to show that at the date of the application, the colour was associated exclusively with the goods to which the applicant applies it.
An astute applicant would conduct a credible market survey that addresses the concerns raised by the delegates in the canary yellow and purple decisions before filing the application to register a colour as a trade mark. If the market survey has the desired results, this evidence should ensure that the higher registrability hurdle can be cleared.
November, 2002
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