COLORADO removed from register for lack of distinctiveness

In Colorado Group Limited v Strandbags Group Pty Limited ([2007] FCAFC 184, November 28 2007), the Full Court of the Federal Court of Australia has ordered the cancellation of the registration of the trademark COLORADO in respect of backpacks.

The decision at first instance involved an action for trademark infringement and a subsequent counterclaim seeking an order to remove the word mark COLORADO from the Register of Trademarks. Central to both that decision and the appeal were the issues of proprietorship and distinctiveness.

In 1982 the appellants - Colorado Group Limited and its subsidiary, Williams the Shoeman Pty Ltd - used the word mark COLORADO on backpacks. Subsequently, COLORADO was used with and without a mountain logo and applied to a wide range of goods. The mark was also used on shop signage. In 2001 the appellants registered the word mark COLORADO to cover bags, wallets, purses and backpacks.

In 1998 Strandbags Pty Ltd purchased various businesses from Edgarlodge Pty Ltd. Edgarlodge had used a logo with the word 'Colorado' in 1991, and later registered the combination mark in respect of bags, travel goods and belts. The combination mark was later applied to backpacks, wallets and purses.

The pertinent questions before the Full Court were as follows:

• If the appellants made first use of the word mark COLORADO on backpacks, would its proprietorship extend to bags, wallets and purses?
  
  
• Are bags, wallets and purses the same kind of articles as backpacks?

The Full Court upheld the primary judge's approach for determining whether the goods in question were of the same kind. The primary judge expressed the view that a proprietor is entitled to have its mark registered in respect of goods or classes of goods which are of the same kind as those for which the mark has been used. The court noted that "the task is not to identify the genus into which the goods upon which the mark was used fall, but to identify the goods".

Accordingly, the Full Court upheld the primary judge's conclusion that bags and purses were not the same kind of goods as backpacks. The court further found that bags were not the same kind of goods as wallets and purses. Therefore, it held that, while the appellants were responsible for the first use of the mark COLORADO on backpacks, its proprietorship did not extend to bags, wallets or purses.

With regard to distinctiveness, at first instance the primary judge held that the name 'Colorado' was not used in a geographical sense. Rather, its use was arbitrary and hence the word 'Colorado' was inherently adapted to distinguish pursuant to Section 41(3) of the Trademarks Act 1995 (Cth). No proof of secondary meaning (as required by Sections 41(5) and (6)) was considered.

On appeal, the Full Court overturned the primary judge's decision and held that the word 'Colorado' alone is not inherently adapted to distinguish. The court stated that the relevant question was not whether the word 'Colorado' was used by the appellants in a geographical sense, but whether it had a signification that made it likely that other legitimate traders might want to use it. The court found that the word 'Colorado' conjured up notions of trekking, ruggedness, fashion and the Rocky Mountains; therefore, it lacked inherent distinctiveness and failed to satisfy Section 41(3).

Proof of secondary meaning, as required to satisfy Sections 41(5) and (6), was also considered. The Full Court held that despite evidence of the word 'Colorado' being used with a device on shop signage, in advertising and on shoes and clothes, it could not be said that the use of the mark COLORADO would distinguish the appellants' goods from those of other traders. Hence, the requirements of Section 41 were held not to have been satisfied.

Accordingly, the Full Court ordered the cancellation of the registration of the trademark COLORADO in respect of backpacks.

Veronica Shannon and Stephen Stern, Corrs Chambers Westgarth, Melbourne