Cadbury hits PURPLE patch in word and colour mark registrations

New Zealand

Chocolate and confectionery manufacturer Cadbury Limited has overcome opposition to its registration of the word mark PURPLE and the colour purple in relation to confectionery goods in Class 30 of the Nice Classification.

In the first case, Effem Foods Limited opposed Cadbury's application to register the word mark PURPLE in relation to chocolate and confectionery goods on the grounds that third parties use (i) the colour purple on packaging for Cadbury's goods of interest, and (ii) the word 'purple' in association with those goods. While Assistant Commissioner Walden held that Cadbury's evidence did not establish use of the word mark PURPLE, she disagreed with Effem's contention that the mark was incapable of acting as a badge of origin. Walden noted that (i) a number of colour word marks, such as ORANGE or RED, were registered in New Zealand, and (ii) Effem itself owned a registration for the word 'purple' for goods in Class 31.

Walden further rejected Effem's argument that Cadbury's registration of PURPLE would prevent other traders from using the word 'purple' to describe the colour of their products' packaging or ingredients, or the products themselves. Walden found that there was little evidence showing use of the word 'purple' by other traders. She concluded that 'purple' is (i) not in common use in relation to goods in Class 30, and (ii) inherently capable of distinguishing Cadbury's goods, which are not purple in colour.

Lastly, Walden agreed with Cadbury that PURPLE has no direct reference to the character or quality of the goods to which it applies as purple-coloured goods had been specifically excluded from the application. Accordingly, Walden rejected the opposition.

The second case concerned an application filed by Cadbury in July 1999 for chocolate confections. The mark was described as "the colour purple, as applied in any form to the wrapping, packaging or promotional material used on or in association with the goods". This was subsequently amended to "the colour purple … applied by any process, as the predominant colour to the wrapping, packaging or promotional material used on or in association with the goods". JH Whitaker & Sons Limited opposed the application. Three other unrelated parties, including Société des Produits Nestlé, considered opposing the application, but did not.

JH Whitaker argued that a single colour is not a sign that can be represented graphically (as required under New Zealand trademark law), or if it could be so represented, Cadbury had failed to define the sign adequately. Assistant Commissioner Walden rejected the claim, holding that (i) "the colour purple is a sign that is capable of being represented graphically", and (ii) Cadbury had described adequately the scope of its colour mark (subject to Cadbury entering an appropriate Pantone colour reference in the description of the mark).

Walden then considered whether Cadbury's colour mark was, at the time the application was filed, capable of distinguishing Cadbury's goods from those of other traders. This test requires that the mark has at the filing date an inherent capacity to distinguish, rather than a mere potential to become distinctive in the future. JH Whitaker argued that purple is a generic colour for milk chocolate and fruit flavoured chocolate. Walden disagreed:

"I accept … that the colour purple may have different functions such as being decorative or indicating a product range or flavour of a purple coloured fruit or ingredient, but the evidence in this particular case does not establish for me that these functions are at the generic end of the spectrum for block chocolate or chocolate in bar or tablet form."

She also added:

"I see nothing in the evidence to suggest that the colour purple is habitually associated with block chocolate or chocolate in bar or tablet form …
[a]ccordingly I find that the colour purple is capable of distinguishing [Cadbury's goods from those of other traders]."

Walden went on to consider whether the colour purple was inherently adapted to distinguish Cadbury's goods in the course of trade and, if so, was the mark factually distinctive (that is, in fact, inherently adapted to distinguish those goods by reason of any prior use of the mark or any other circumstances). Again, the relevant date was the filing date of Cadbury's application. Walden concluded that Cadbury's mark "has a low level of inherent distinctiveness", and as such Cadbury "will need to establish a very substantial level of factual distinctiveness by reason of the prior use of the mark or any other circumstances".

With regard to whether the mark had become factually distinctive through use, Walden was of the view that consumers would not normally perceive a single colour as a badge of origin unless they had been educated to see the colour as having that function. Even so, Walden held that as a result of Cadbury's "extensive, continuous, and largely consistent" use of the colour purple over the years in association with Cadbury's goods, this was "likely to result in the public perceiving that the colour purple functions as a badge of origin" for those goods. Having considered Cadbury's survey evidence, Walden concluded "that there is a very strong association between the applicant and the colour purple, which I consider is most likely to have existed at the relevant date". Therefore, the opposition failed.

Although both oppositions were decided under the Trademarks Act 1953, it is likely that the same result would have been reached under the Trademarks Act 2002. However, in the second case, a different hearing officer may have interpreted Cadbury's evidence of use differently.

Carrick Robinson, James & Wells, Auckland

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