Colour trademarks in Australia
4 essential things you need to be aware of
Wondering if you should trademark a colour in your business?
Over the last few years, there have been a few high profile colour trademark cases. From the BP colour trademark and the 7-11 colour trademark to the Cadbury colour trademark case.
Australian trademark law gives individuals and enterprises the opportunity to receive legal protection for a distinctive “sign” that differentiates their products from their competitors.
According to IP Australia, “A colour, by itself or in combination with other colours and/or any of the other features which fall within the definition of a sign, may be used as a trade mark.” Refer Part 21 (4) of the Trade Mark Office Manual of Practice and Procedure.
1 How to register a colour trademark in Australia
Technically the process to register a colour trademark is exactly the same as a ‘normal’ trademark like a name or logo.
The application for the colour or colours trademark needs to include “a clear and concise description of the trade mark as an endorsement to the application.” Quick off the Mark® can assist you with your colour trademark registration.
2 Objections to colour trademark registration
There are higher levels of objections because a trademark must be capable of distinguishing the trader’s goods/services from similar goods/services of other traders.
All trademarks must meet this requirement of capability to distinguish.
In cases of single colour (like the Cadbury’s purple) it is harder to meet the test. The view is that other people would have genuine and good faith needs to use the colour (e.g. purple) in connection with the same or similar goods or services (e.g. chocolate).
Single colour cases will most likely require the trademark applicant to prove that because of how they’ve used/promoted that seemingly generic colour that it does or can distinguish their products in the marketplace.
In Cadbury’s case the objection was presented under a particular section of the Trade Marks Act 1995 that was in force at the time that required they prove the colour purple factually distinguished their goods as at the date of the filing of the application. This required a large and persuasive volume of evidence of use to be filed by Cadbury.
3 A colour trademark doesn’t give the user the right to ‘own’ the colour
Colours are recognised by consumers and used to distinguish between products. From the Cadbury purple colour to the iconic Tiffany blue colour, a colour trademark doesn’t imply that the owner of the colour can stop someone from painting his or her office in blue or purple.
Just like other ‘signs’, colour trademarks are registered in connection with particular goods or services and ultimately the owner will gain rights to the colour for those goods/services.
Protection of the colour relates to the specific colour and to a specific group of products or services. This means that one company can use the colour to identify chocolate, while a separate company uses a similar shade to identify a make up range.
In this case, each company could get separate colour trademark protection relating to the use of that colour with its products.
4 Lessons from the Cadbury colour trademark case
It took Cadbury quite some time to get the Cadbury ‘purple’ colour registration (Pantone 2685C) and required persuasive evidence of use that the colour purple did in fact act as a ‘badge of origin’ for the goods. This registration was based on the colour alone without other material such as the Cadbury brand.
Others have heavily opposed the Cadbury colour marks (such as Darrell Lea Chocolates in Australia and Nestle in the UK). In addition to trademark opposition proceedings, the parties have spent time in court around the situation. Whilst most matters seem to have settled for now, they are widely discussed.
Ultimately, the Australian trademarks were allowed to be registered but for specific products like boxed chocolate and blocks of chocolate – rather than all encompassing “chocolate”.
The ruling recognised that when consumers purchase chocolate bars or blocks, they are guided by recognition of colour. This means other traders can be prevented from using the same or similar shade of purple for packaging of their corresponding chocolate products.
Contact Quick off the Mark® here for colour trademark registration advice.
Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.
Disclaimer – The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.