Colour Me
Branded
Craig Subocz, Solicitor
"Colour plays an
important part in product recognition by consumers.” Mr
Justice Heerey of the Federal Court of Australia wrote the
above sentence in his Honour’s judgment that
Darrell Lea Chocolate Shops Pty Ltd
had not engaged in misleading and deceptive conduct when it
used the colour purple to package a particular line of
chocolates, a conduct objected to by
Cadbury Schweppes Pty Ltd.
Colour
branding has received a great deal of legal attention in
2006. As many traders use “colour brands” to market
themselves and their products, this trend to litigation in
order to protect the reputation in a colour mark will
continue.
This
article examines the trends and recommends some useful
guidelines for the protection of colour brands.
A
snapshot of relevant case law
Last year opened with
Clark Rubber successfully
preventing a competitor from opening a store featuring
similar colours. Clark Rubber persuaded the Federal Court
that it had developed a strong reputation in a particular
colour scheme and that the competitor was trying to pass
itself off as being associated with Clark Rubber in order to
induce consumers to shop with the competitor by using a
similar colour scheme.
Cadbury had mixed success in
protecting the colour purple. Cadbury failed to convince the
Federal Court that it had gained a reputation in the
“Cadbury purple” colour, applied to its chocolates. The
Court found the colour was only part of Cadbury’s overall
branding. Darrell Lea had not passed off its products as
those of Cadbury when it used a different shade of purple to
package its Christmas assortment.
However, Cadbury persuaded
the Trade Marks Office that the same shade of purple should
be registered as a trade mark with respect to certain
products. Cadbury relied on much the same evidence, but
whereas the Court found that the evidence did not suggest
Cadbury’s exclusive reputation, the Office found that the
colour purple had become capable of distinguishing Cadbury’s
chocolate products from those of other traders.
Both
decisions are currently under appeal
Finally, the full Federal Court of Australia held that BP
was not entitled to registration of the colour green with
respect to service stations. The Court found that BP’s
evidence did not establish that the colour green, by itself,
had become capable of distinguishing BP’s services from
those of other traders. After further consideration of
submissions made by BP, the Court ordered the cancellation
of the marks’ registration, but stayed its orders pending
BP’s appeal to the High Court of Australia.
Useful trends
Whether you are considering applying to register a colour
trade mark, or preventing another competitor from adopting a
similar colour scheme to your own, in 2006, the Courts have
established some useful guidelines.
Do not underestimate the
value of evidence
To restrain a competitor’s use of a similar colour scheme,
you must establish a reputation in your scheme so that
consumers will associate it with you and/or your products.
Similarly, be prepared to
file considerable evidence with the
Trade Marks Office (TMO) to
establish that the colours are capable of distinguishing
your goods or services from those of other traders.
Understand the role colours play in your corporate branding
One of the reasons Cadbury failed in its claim against
Darrell Lea was that Cadbury provided no evidence that
suggested that consumers associated purple by itself with
Cadbury chocolate.
Although colour is an
important part of brand recognition, consumers also rely
upon product features, logos and the context of the sale to
pick their products.
The evidence will determine
whether it is worth litigating to protect the colours
themselves, or in the context of a wider branding scheme.
Consistently enforce exclusivity
To establish exclusivity in a colour scheme, do not dilute
its strength by allowing others to co-exist with you. For
example, Cadbury agreed with Nestlé to allow Nestlé to use
purple with respect to some of its products. This undermined
Cadbury’s argument that the public associated
purple-packaged chocolate products with Cadbury.
Be
careful when applying to register colour trade marks
Trade marks often provide a simpler and cheaper alternative
to enforcing rights under passing off and preventing a rival
from engaging in misleading and deceptive conduct, because,
generally, no reputation needs to be established in respect
of a registered trade mark.
However, Australian Courts
accept that evidence will need to be presented to the Trade
Marks Office (TMO) to establish that the colour has become
capable of distinguishing your goods or services from those
of other traders. Therefore, tailor the trade mark in the
application to match the evidence. The restrictions on
amending a trade mark application after filing are strictly
enforced.
Colours are an important
branding mechanism in a competitive marketplace. The law
recognises that colours can distinguish one trader from its
competitors. However, as the cases demonstrate, a trader
will need to put in the “hard yards” before the law will
grant protection to the trader’s colour scheme.
For further information,
please contact Craig on +61 3 9609 1646 or email
csubocz@rk.com.au
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