3M and Cadbury appeal colour mark decisions

Despite the Trademarks Act's single test for registration of traditional trademarks (eg, words and logos) and new trademarks (eg, colours and shapes), the Trademarks Office's decisions to reject registration applications for 3M's canary yellow and Cadbury's purple reflect its practice of treating colour marks differently. However, as reported in the World Trademark Law Report last week in Kenman court changes approach to shape marks, the Full Federal Court has refuted this practice, making it easier to register shapes - and by analogy colours (as well as sounds and scents). As a result, appeals of the decisions in 3M and Cadbury are eagerly awaited.

To date, registrations of colour marks have been secured if the applicant was able to demonstrate that (i) the colour is not required for use by other traders to describe their similar goods, or (ii) the colour is associated exclusively with the goods to which the applicant applies the colour, at the date the trademark application is filed.

3M sought to register the colour 'canary yellow' in respect of its POST-IT adhesive stationery notes but the Trademarks Office considered that, given the number and variety of coloured paper products, there is a competitive need for other traders to be able to use all colours in respect of these products.

In the application by Cadbury to register the colour purple in respect of chocolate products, the Trademarks Office concluded that other traders are likely to want to use purple to package their confectionery because the colour:

• has connotations of imperial rank or brilliance;
   
• is not more difficult or expensive to produce than any other colour; and
   
• could be used to indicate that confectionery contains berries or other fillings.

The Trademarks Office rejected Cadbury's argument that extensive use of purple in relation to its products was sufficient to show that the colour functioned as a trademark, as the company failed to show that:

"its purple packaging has acquired a secondary meaning in addition to its ordinary meaning of being an attractive packaging for confectionery. That secondary meaning must be that of an indicator of trade source for members of the public."

The decision in Kenman may spare applicants the trouble of having to conduct a credible market survey that addresses the Trademarks Office's concerns (ie, that the colour has acquired a secondary meaning among the public as an indicator of the trade source). Although dealing with the shape of a six-legged bug, Kenman indicates that the mere appearance of a particular colour in relation to goods could create an association between the colour and the goods.

Caroline A Baker, Freehills, Melbourne