Effem Foods Limited v Cadbury Limited
CIV 2004-485-2127, High Court, Wellington, McKenzie J, 12 December 2005
This was an appeal from the decision of the Assistant Commissioner of Trade Marks to allow the registration of the word mark PURPLE by Cadbury in class 30 in relation to “chocolate, chocolates, non-medicated confectionery, biscuits, wafers, cakes, snackfood, preparations made from cereal, ice cream, ices, frozen confections; none of the foregoing goods being coloured purple”.
The application by Cadbury was part of its ongoing international campaign to secure rights to the colour purple - even though here it was the word mark PURPLE in issue. An important aspect of the application was the exclusion in the specification i.e. “none of the foregoing goods being coloured purple”.
As the application was filed prior to the Trade Marks Act 2002 coming into force, it was considered under the provisions of the Trade Marks Act 1953. However, the general principles considered in this case will still be relevant to determining whether a mark is registrable under s18 of the 2002 Act.
At first instance the Assistant Commissioner had held that the word PURPLE was capable of distinguishing under s14(1)(d) and (e) of the 1953 Act on the basis that the word PURPLE was not descriptive of goods that were not coloured purple. Further, PURPLE was not a common word in common use in relation to the relevant goods.
The opponent, Effem, appealed to the High Court on the grounds that:
(a) PURPLE could not function as a trade mark when used on or in relation to the goods specified in the application because the word was descriptive of those goods, and otherwise non-distinctive when used in relation to them; and
(b) The exclusion of purple-coloured confectionary and baking products did not overcome these obstacles. Such negative restrictions should not be permitted, as they led to uncertainty.
As to the first ground of appeal, McKenzie J was troubled by the exclusion in the specification of goods. It became common ground at the hearing that the exclusion would cover goods which themselves were coloured purple or contained the colour purple and also goods and packaging which contained the colour purple. The judgment refers to these as “purple goods”.
In particular, the Court’s concern over the exclusion included:
(a) Whether the exclusion was part of the description of the goods or whether it was a condition or limitation under s26;
(b) Whether the mark PURPLE when used on non-purple goods was deceptive under s16.
As neither of these matters were argued on appeal the judge decided the appeal without addressing them. He assumed therefore in favour of the respondent that the word PURPLE had no direct reference to the character of the goods;
(c) A third issue which was taken up by the appellant was that the exclusion of purple coloured goods should not be permitted because it was a negative restriction relating to a characteristic of goods as opposed to an exclusion of a category of goods. The judge noted the ECJ decision in Postkantoor [2004] ETMR 57 but felt it was not necessary for him to decide this point. He noted that it raised important issues which may need to be addressed under the 2002 Act. He proceeded on the assumption that a negative restriction in the form adopted was permissible.
As to the key question, whether the word PURPLE was adapted to distinguish goods of the proprietor, McKenzie J applied the well-known Du Cros test as to whether other traders were likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. Citing the Court of Appeal decision in McCain Foods (Aust) Pty Limited v Conagra Inc [2002] 3 NZLR 40, McKenzie J noted that the courts consideration extended to “products of the kind in question”. Therefore consideration of the Du Cros test did not require that distinctiveness be considered just in relation to use of non-purple goods (as the applicant argued).
Further, McKenzie J held that people in the trade could not be expected to know without a detailed knowledge of the register that what was to be distinguished by the mark applied for was not all types of ice cream, for example, but only ice cream not coloured purple. He therefore held that restriction of consideration of distinctiveness to non-purple goods was not required by the Du Cros test and would be quite unworkable in this case.
Although there was a dearth of evidence adduced by the appellant concerning use of the word PURPLE by other traders, this was not fatal. While actual use may be relevant to likelihood, that was not the test. Likelihood was sufficiently established in this case by evidence that purple packaging is sometimes used and use of the word as descriptive of that packaging would be legitimate.
Allowing the appeal, the Court held that the mark PURPLE does not have the degree of distinctiveness necessary for registration under s14(1)(d) or (e) and would not meet the lesser test of whether the mark was capable of distinguishing the goods for the purpose of s15.
Cadbury has filed an appeal to the Court of Appeal.