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The colour purple, a symbol of imperial power in Roman times, over-embellished literature (“purple prose”) and even pop celebrity Prince (or “Symbol” as he is now better known) is also increasingly associated with a particular brand of chocolate.

That purple used by Cadbury is technically described as Pantone Matching System Code 2685C. Cadbury has fought to exclusively use purple for its chocolate confectionary products for almost a decade. Was the 10-year legal stoush in the Australian Federal Court worth all that effort and cost?

The colour purple has been used by Cadbury for many decades as a “badge of origin”. By way of the intense use of purple over a very long period of time, the colour purple became Cadbury’s “badge” and, as it argued, that is how consumers identified Cadbury’s chocolate products. Essentially, that shade of purple had developed a significant reputation and goodwill with Australian consumers.

The goodwill phenomenon

Goodwill is a very important but intangible asset to any company balance sheet. It is a fundamental reason why many businesses (small and large) are willing to go to extreme lengths to protect their brands. Goodwill represents a dollar value in a brand. Goodwill takes effort and expense to develop. Goodwill can best be described as that mystical “pull-factor” or “attractive force” (in the words of one judge) exercised upon consumers when they are exposed to a brand in the marketplace.

Many businesses naturally align their get-up with different colours in order to distinguish themselves from their competitors. A striking example of this is at airports:  AVIS Car Rental uses the colour red, Hertz Car Rental uses the colour yellow, Europcar uses the colour green and Budget uses dark blue and rubs shoulders with Thrifty’s use of light blue.

The ability for consumers to readily identify a product or service by reference to a colour means that:

(1)  the brand has become distinctive (or may have started out being distinctive) when compared to other products in the same commercial space; and

(2)  the brand has developed a reputation which forms the foundation for goodwill.

Everyone’s using colour

There are more than 200 registered coloured trade marks in Australia. All types of businesses are using colour to promote their goods or services these days. Petrol service stations, telecommunication providers, and (importantly given the complexity of the names of branded medicines) pharmaceutical drugs (coloured capsules) are capable of trade mark protection. With the recent proposed initiative by the Australian Federal Government to ban advertising on cigarette packaging, it is entirely possible that cigarette companies will resort to colour trade marks as a way of getting around the prohibition.

A colour can be turned into a badge that describes your product or service without using words. Cat food is a recent example. A recent challenge in the Federal Court of Australia this year between Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) (Mars) and Societe des Produits Nestle SA (Nestle) over a colour called “Whiskas Purple” (being a mixture of magenta and cyan) for cat food products.

The main legal issue was that Whiskas Purple was inherently adapted to distinguish Mars’ cat food products from say Nestle’s branded cat food products or any other trader’s cat food products. Most importantly, the Court stated that “[Mars] adopted an entirely new colour … and promoted it heavily from the outset …”.  Mars started using its Whiskas Purple in 2000, some time before it filed for trade mark protection in 2002.

Badge of origin

A colour must function as a “badge of origin”. Applying splashes of colour to packaging interchangeably, with no history or consistency, or simply using colour as a garnish on packaging will not necessarily be considered to be use of a colour (or colours) as a trade mark.

The messages to heed from both the Cadbury Purple and Mars Whiskas cases are that if a business wants to secure trade mark protection for a particular colour in respect of any type of product or service then it must use the colour as much as possible, as often as possible and for as long as possible. The general rule is the longer your history of use, the better your chance of acquiring trade mark protection will be. However, if a business can demonstrate intensive use over a shorter period of time, it can be possible to obtain trade mark protection on that basis.

This raises the question of what is considered to be evidence of use? Evidence of use is any and all forms of marketing and advertising material that a business creates and uses and which most importantly, bears the particular colour which it has intended to be used as its badge as I have described earlier. Many businesses will file trade mark applications only to be caught out by not having any evidence to show why they are entitled to a monopoly right over a particular colour or other form of trade mark.

Keep a record

In my experience, a significant number of businesses have an impressive history of marketing and promoting a brand over a significant length of time. However, when it comes to identifying that advertising material or in some cases, locating actual physical examples of the advertising material, it is again in many cases, nowhere to be found or minimal in comparison to the actual recounted history of use.

Businesses need to be mindful that retaining old and what may seem to be “expired” advertising material is not only a good way of preserving a corporate memory, but it will in many instances be the difference between owning a monopoly right in a trade mark or not.

By maintaining a register or catalogue of marketing and advertising material, businesses will be ready in the event that they are required to demonstrate why it should be granted a monopoly right for a colour or other form of trade mark.

In conclusion

The best argument which a business can make in the course of a trade mark application which has encountered an objection (usually because an earlier trade mark exists which is considered to be similar) is to turn on the reputation and goodwill that the trade mark has developed over time. A reputation and therefore goodwill is demonstrated by (among other details), recounting a solid history of advertising and marketing campaigns with actual examples of the advertising that was used at the relevant time.

If a business is able to successfully acquire trade mark protection for its colour brand, the protection that is granted is effectively perpetual. As long as you keep the trade mark registration in force, and the trade mark is used during the protection period, the trade mark is valid. Registering a trade mark to protect a colour brand, or any other form of branding for that matter, is not only sensible but an intelligent business strategy.

–Nada Maltaric is an Associate with Wrays Lawyers in Perth.

Nada Maltaric

Nada Maltaric

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