COLOUR TRADEMARKS do not necessarily give businesses an exclusive right to a particular colour associated with their products, leading IP lawyer Wayne Condon, a partner with Clayton Utz, has said. In fact, unless a company can prove that a competitor has deliberately tried to trade on their reputation, infringement is hard to prove.
Condon said the recent Federal Court decision in favour of Darrell Lea and its right to use the colour purple on its chocolate wrappings, despite Cadbury’s concerns that consumers could mistakenly think they were buying Cadbury products, showed how difficult it was for traders to establish a “distinctive reputation in a colour to the exclusion of other traders”. He said the case had raised the bar for future disputes.
“There is a lot of hype around at the moment about various companies obtaining registration of colour, but that is only one half of the equation,” Condon said. “The other half that has to be thought about and considered strategically by companies is once they have such a registration, how are they going to be able to enforce it?”
The trademark owner needs to establish that another trader is using a similar colour, or other non-traditional trademark, as a trademark, or a badge of origin for their own goods. “It’s quite difficult to establish that in the case of non-traditional trademarks, including colour, because more often than not the consumer out there in the general public doesn’t recognise colour alone as a trademark,” Condon said.
Colour was more likely recognised as a decorative element, so trademark owners would always face the argument that the colour was not being used as a badge of origin, but as a decoration, he said. “There will have to be some evidence … to show that it was something more.”
While the Cadbury case might not be the last word on the matter, Condon said it would provide no assistance for companies seeking to monopolise colour as part of their trading reputation. Cadbury argued before the Federal Court that it had a distinctive reputation in relation to its use of the colour purple to package its chocolate products and that Darrell Lea’s use of a similar colour was likely to mislead or deceive consumers into thinking its products were associated with Cadbury’s.
However, in dismissing the case, Justice Heerey found many traders had used a similar shade of purple on chocolate wrappings and Cadbury had never used the colour in isolation as a badge of origin.
“What needs to be established is that the colour — or the sound or the shape — is used on its own as signifying the trader and no one else,” Condon said.