Effem Foods Limited v Unilever Plc and Bluebird Foods Limited

Assistant Commissioner Walden, IPONZ Hearing Office, Wellington

T43/2003, 26 November 2003

Colour marks consisting of a single basic colour require a very high level of factual distinctiveness (obtained through use) in order to become registrable as a trade mark.

This decision was given in relation to oppositions by two parties to registration of trade mark no. 295211 for the colour Orange in class 30 for “rice”. 

The applicant originally described the precise colour for which protection was sought by referring to an example attached to the application itself.  IPONZ later adopted a policy requiring colours to be defined by reference to a standard colour indexing scheme such as the Pantone system.  The applicant sought to change its description of the colour to a range covered by several Pantone reference numbers.  IPONZ refused to accept this change.  At the hearing the applicant reluctantly agreed to describe its colour as Pantone shade 021C which was allegedly closest to its representation attached to the opposition. 

Evidence

Both the applicant and the first opponent filed survey evidence, the admissibility and weight of which was contested.  The Hearing Officer noted that conflicting High Court obiter exists relating to whether High Court rules of evidence apply in IPONZ hearings.  Consideration was given as to whether the usual High Court rules of evidence apply in IPONZ hearings (IPONZ having historically a less stringent attitude towards admissibility) but found that the evidence was admissible even on the strict High Court standard without stating opinion as to the correctness or otherwise of the respective obiter statements.

Graphical representation

To fall within the definition of trade mark in the Trade Marks Act 1953, the alleged mark must be capable of graphical representation.  The High Court held that the colour Orange is capable of graphical representation but an application ought to be accompanied by a description of how the colour is to be applied to the appellant’s goods.

Definition of trade mark - capable of distinguishing

The Hearing Officer considered whether the colour orange was capable of distinguishing the applicant’s goods in terms of the definition of “trade mark” in s2 of the Act.  As the applicant did not specify how the colour was to be applied to the goods, the Hearing Officer considered the mark in relation to the goods (rice) in a broad way including in relation to the packaging, promotional material and rice itself.  The Hearing Officer noted that single colours have inherently low distinctiveness and that the shade concerned in this case was a common shade of orange.  The mark was therefore at the lower end of the “spectrum of distinctiveness” but was not completely generic to rice or habitually associated with it. The mark therefore fell within the statutory definition of ‘trade mark’. 

Registrability

The Hearing Officer then considered registrability.  The evidence showed that other traders wished to use (and had used) the same or a similar shade of orange in respect of rice without any improper motive.  Given the low level of inherent distinctiveness, a high amount of factual distinctiveness (through use by the applicant) would be required to establish registrability).  The evidence failed to establish this.