Cadbury Limited v J H Whittaker & Sons Limited
Assistant Commissioner Walden, IPONZ, T26/2004, 15 November 2004
As part of its ongoing international campaign to protect its corporate purple colour, Cadbury Limited has now secured trade mark registration in New Zealand for the colour PURPLE in relation to “block chocolate, chocolate in bar or tablet form”. The trade mark is described on the register as consisting of “the colour purple (PMS 2685C) as shown in the representation attached to the application as applied predominantly to the packaging of the goods”.
This trade mark application was filed on 19 July 1999. Initially, four parties showed an interest in opposing this application and sought extensions of time to do so. In the event however, only the opponent in this case proceeded.
As this application was filed prior to the Trade Marks Act 2002 coming into force, it was considered under the provisions of the old Trade Marks Act 1953. The main grounds of opposition, and the only ones considered by the Assistant Commissioner, were that:
(a) The colour mark was not a trade mark within the meaning of s2 of the Act; and
(b) The mark did not meet the criteria for registrability under either s14 or s15 of the Act.
The challenge under s2 of the Act was essentially that the mark was not defined sufficiently to be “graphically represented”. (Graphic representation remains a part of the definition of trade mark under the new Act.) This challenge included allegations that:
(a) Single colours cannot be graphically represented;
(b) The colour in this particular case was ill-defined; and
(c) The description of the mark was not sufficiently certain.
The Assistant Commissioner held that the Act did in fact contemplate single colours being registrable and such colours were capable of graphic representation. It was held, however, that in order to meet concerns regarding precision, accessibility, objectivity and durability of the representation of a mark, a Pantone shade reference, or similar would be required. (Currently, and at the time of the hearing, IPONZ practice requires Pantone shades or similar to be provided for all colour trade mark applications. However this policy was only introduced after Cadbury had filed its application in this case.) The Assistant Commissioner was largely satisfied with the description of the mark used however, it did require some minor amendments so that the description fitted the use of the mark established by the evidence.
The opponent also alleged the mark was not “capable of distinguishing” one person’s goods from another within the meaning of s2 of the Act. The opponents argued that the colour purple was inherently generic for fruit-flavoured chocolates, especially berry or raisin flavoured. The evidence however was found to not support this assertion. The colour purple was held to be capable of distinguishing at the s2 level.
The Assistant Commissioner then addressed the question of whether the trade mark had sufficient distinctiveness to be registrable under s14 or s15 of the Act. The parties accepted that single colour marks have very low inherent distinctiveness. The main issue was whether the mark had acquired factual distinctiveness through use sufficient to be registrable.
The Assistant Commissioner found that the applicant’s evidence established that it had used the colour purple extensively since the 1920s as the main background colour for the packaging of its milk chocolate products. This in itself was not considered sufficient to prove registrability. The Assistant Commissioner went on to consider what consumers and members of the trade would understand the mark to consist of, and whether the mark would be perceived by them as a badge of origin.
The Assistant Commissioner stated that:
(a) Normally, a single colour will not be perceived as a badge of origin by the public unless the public have been educated to so perceive it; and
(b) The fact that most of the use of the colour purple by the applicant had been in conjunction with other, more traditional trade marks would make it more difficult (but not impossible) to show that the colour had functioned as a trade mark.
In this case, the evidence showed that the applicant had made specific efforts to educate the public to see the colour purple as its trade mark. This, along with the extensive use of the mark over many decades, meant that the public were in fact likely to see the mark this way. This conclusion was supported by survey evidence showing a strong association held by the public between the colour and the applicant.
Comment:
It is now quite clear in New Zealand that, as with shape marks, in order for a single colour mark to be registrable, a very significant degree of use must be shown together with evidence that the applicant has educated the relevant section of the public that the colour is used as an indication of origin of the goods and/or services involved.