Registering colour trade marks in Australia

This article, which presents an outline of the framework for registering colour trade marks in Australia as well as practical tips to maximise the chances of successful application, first appeared in the June 2009, Chinese-language edition of Managing Intellectual Property. To view the original article in Chinese, click here (PDF).

In Australia, trade marks may be protected by registration, at common law or under the consumer protection provisions of the Trade Practices Act. Each of these forms of protection has been invoked to protect trade marks or trade dress consisting of one or more colours. Protection at common law and under the Trade Practices Act require a showing that the plaintiff’s use of the colour has established a reputation such that the defendant’s use is misleading or deceptive. This can be quite burdensome and expensive. Enforcement is much easier if a registration of the colour can be obtained under the Trade Marks Act. In order to do this however, the applicant must show that the colour is capable of distinguishing its goods or services, either inherently or as a result of reputation obtained through use.

The approach of the Courts and the Trade Mark Office

Trade Marks defined by reference to colour have long been registered in Australia and in the United Kingdom. Examples include Winterbottom Book Cloth Co Ltd’s Application 42 RPC 50 (red line on tracing cloth), Reddaway & Co Ltd’s Application 41 RPC 147 (blue lines on fire hose), Smith Kline & French Laboratories Ltd v Sterling Winthrop Group Ltd, 1996 RPC 511, (coloured pellets for pharmaceuticals), the Adidas three stripe mark, and many more. In Australia, such marks were registered under the predecessors to the Trade Marks Act 1995 (“the 1995 Act”) if they were shown by evidence to be distinctive, or capable of becoming distinctive (Part B).

The 1995 Act, for the first time, included colour per se in the definition of a “sign” (trade mark). The first published decision in the Trade Marks Office was in Application by Verve Cliquot Ponsardin for registration of the colour orange in respect of wine. The registrar’s delegate found that the mark was not inherently adapted to distinguish but that it had, through extensive use, come to distinguish the applicant’s goods. The registration was therefore allowed, subject to limitation of the statement of goods to read “champagne; sparkling wines” and the description of the mark to “the trade mark consists of the colour orange, as represented on the application form, when used as the colour of a label“.

Court consideration of colour trade marks under the 1995 Act

The first case to come before the Courts was in respect of an application by Philmac Pty Ltd to register the colour terracotta as applied to the connecting insert of polyethylene pipe fittings. To qualify for registration, Philmac had to show either that the colour terracotta was inherently adapted to distinguish its goods (s. 41(3)) or, if not inherently adapted, it had, through prior use, in fact become capable of distinguishing of those goods (s. 41(6)). The Court found that the mark was not inherently adapted to distinguish but that as a result of Philmac’s extensive use and promotion it was distinctive in fact in respect of a narrow range of goods. The Court applied the following criteria:

• Philmac’s use was use as a trade mark, i.e. it was “used and presented as a point of difference between its product and the products of other traders”.
• There are no special rules applying to colour marks.
• A mark will not be inherently adapted to distinguish if:
  • the colour normally denotes a meaning appropriate to the goods, e.g. the colour red on hot water taps;
  • the colour is used for purposes of practical utility e,g, white for light reflecting materials;
  • the colour is a naturally occurring colour of the goods, e.g. terracotta for roof tiles;
  • there is a competitive need for the use of colour in respect of the nominated goods.

The Court found Philmac’s mark failed to meet the last criterion in view of evidence of the use of colours for purposes such as coding on other products in the irrigation field. Nevertheless, it found that due to Philmac’s extensive use and promotion of the colour terracotta as identifying its goods the mark had in fact become distinctive in the narrow field of “plastic compression fittings for B class rural imperial sized polyethylene pipe”.

Chocolate maker Cadbury has attempted to protect the colour purple against use by a competitor by action under the Trade Practices Act and has sought registration under the Trade Marks Act. The Deputy Registrar found Cadbury had used the mark as a trade mark, and that the extensive advertising and promotion in that period had educated the public to recognise purple as Cadbury’s trade mark in respect of certain chocolate goods.

The decision is under appeal.

9 Tips for registering a colour trade mark in Australia

From the judgments of the courts so far, it appears that:

1. Attempts to monopolise a single colour will be very difficult. Colour combinations are more likely to be successful.
2. In passing off / trade practices cases, everything depends on the facts of the particular case. As Lord Oliver in the English Court of Appeal said “ … this is not a branch of the law in which reference to other cases is of any real assistance except analogically“.
3. It is not essential in Trade Practices cases to show that the plaintiff’s reputation is exclusive. What is required is a showing that the respondent’s particular use is misleading. That task will, however, be more difficult where there are others in the field.
4. In applications for registration of a colour mark it is vitally important to get the representation and description of the mark right at first instance.
5. The use of a colour must be use as a trade mark and not as a mere element of presentation. This will require the promotion and use of the colour in a trade mark sense and will require public education and recognition that the colour is being promoted and used as a badge of origin.
6. Single colours will not be regarded as inherently distinctive unless the colour satisfies each of the criteria in Philmac.
7. Evidence of mere recognition or an association between the colour and the applicant will not suffice.
8. Whilst there are no special rules for dealing with colour marks, but the required standard of evidence, including survey evidence, required will usually be high and the claimed goods or services will need to be restricted.
9. The extent to which colour can be disassociated from other trade mark elements remains unresolved.