|
Not BLACK or WHITE
Substantive issues regarding the trade mark registration process have resurfaced after the Full Court of the Federal Court recently awarded confectionery giant Cadbury Schweppes Pty Ltd (Cadbury) another chance to establish ownership of the colour purple (see Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2007] FCAFC 70 (21 May 2007).
Last year Client News reported on Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 4) [2006] FCA 446, in which the Federal Court denied Cadbury exclusive rights over the colour purple and vetoed its attempt to sue Australian-based confectioner Darrell Lea Chocolates Pty Ltd (Darrell Lea) for using similar colours in their staff uniforms, product packaging and livery. Cadbury alleged that this was a breach of sections 52 and 53 of the Trade Practices Act 1974 (Cth) (TPA), claiming that Darrell Lea misled and deceived consumers by passing off its goods as Cadbury products.
In 2002 Cadbury made an unsuccessful application to the Trade Marks Office (TMO) to register the colour purple as a trade mark of its chocolates and chocolate confectionery. Having used purple packaging for its products since the 1920s, it assumed an exclusive reputation and goodwill within the Australian market through its use of this colour.
Despite the Trade Marks Act (Cth) having broadened the definition of trade mark to include such non-traditional forms as shapes, sounds and colours, Cadbury was not able to show that its use of purple clearly distinguished its products. The Federal Court ruled that Cadbury and Darrell Lea had distinct identities in the market place and that Cadbury did not have an exclusive reputation in the colour purple regarding chocolate.
The Full Court’s recent reversal of this decision follows an appeal by Cadbury, which found that the trial judge had incorrectly dismissed disputed expert evidence called by Cadbury. Subsequently, a new trial has been ordered and the debate over the ability of traders to claim ownership of a colour for use as a trade mark continues.
Facing a similar challenge is petrol giant British Petroleum (BP), which has applied to the High Court to overturn a Federal Court decision denying the company registration of the colour green as a trade mark.
BP had previously convinced the Federal Court that the colour “Pantone 348C” was a distinctive aspect of its product, thereby gaining permission to register it as a trade mark for its service station buildings and facilities. But supermarket and petrol retailer Woolworths, which also uses green in its marketing, opposed the registration. In Woolworths Limited v BP plc [2006] FCACF 132 the court held that:
“Taking all evidence into account, including the absence of evidence as to the frequency of specific print or television advertising, we are unable to conclude that any trade mark use of colour by BP at the relevant times has been other than green as the dominant colour in conjunction with yellow as the subsidiary colour.”
Both BP’s and Cadbury’s cases highlight the difficulties involved in establishing trade mark protection in the Australian market place. Until these further hearings on appeal are determined, the issues of trading in colour remain contentious.
More information
LIV Bookshop: Practical Guide to Australian Trade Mark Law by Oberin & Fitzpatrick, $130.
Useful web links:
Visit the Trade Marks Office at http://www.ipaustralia.gov.au/
Disclaimer: The information in this newsletter is not intended to be a complete statement of the law relating to the issues raised. Accordingly, no person should rely on this information without first obtaining specific advice from Mr Brendan Kelly of our office.
| 
