Colour mark for cat food accepted for registration

Australia
In Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA ([2010] FCA 639, June 22 2010), the Federal Court of Australia has set aside a decision of the delegate of the registrar of trademarks and allowed Mars Australia Pty Ltd's trademark application for a particular shade of purple, referred to as 'Whiskas Purple', to proceed to registration in respect of cat food and additives for cat food. 

Mars uses the mark, which was specifically created for the Mars group, as the predominant colour of its Whiskas cat food product packaging. As Société des Produits Nestlé SA withdrew its opposition to the registration following Mars' appeal of the delegate's decision to reject its application, and as Mars agreed to amend its specification from the wider "foodstuffs for domestic pets and additives for such foodstuffs", the orders of the Federal Court were made by consent. 

The court considered whether the delegate who heard the opposition (see Effem Foods v Nestlé SA ([2008] ATMO 55, June 30 2008)) had correctly concluded that:
  • the mark was not capable of distinguishing Mars' pet food products from the goods and/or services of other persons (Section 41 of the Trademarks Act 1995 (Cth)); and
  • the registrar of trademarks had accepted the application on the basis of evidence or representations that were false in material particulars (Section 62(b)).
Firstly, despite the fact that Nestlé had withdrawn its opposition to the registration and that it was unnecessary to consider Section 41, the court accepted Mars' submissions and concluded that 'Whiskas Purple', at the priority date, was capable of distinguishing Mars' goods from other cat food products and additives for cat food.  

Mars adduced extensive evidence that:
  • it had marketed and used 'Whiskas Purple' as an entirely new colour in Australia across the Whiskas product range, both before and after the priority date; and
  • the colour was carefully developed to create a stronger brand identity and functioned as a trademark. 
The court accepted that, while other traders have used very similar shades of purple on pet food packaging, such use has not been trademark use, and these traders would be unlikely to desire to use the colour at issue as a trademark without improper motive. Further, the registration would not prevent non-trademark use of the purple or pink-purple colours by other cat food manufacturers (eg, to indicate a particular product variety).

Secondly, the court accepted Mars' submission that the delegate who had initially granted the trademark registration had not done so on the basis of various representations made by Mars' declarant, even if they were false in a material particular, under Section 62(b). 

In its opposition, Nestlé had contended that a Mars officer had untruthfully (albeit unintentionally and inadvertently) declared that, when Mars adopted the 'Whiskas Purple' mark, neither this colour nor any other shade of purple was used by any other cat food manufacturer in Australia. Mars highlighted that there was other evidence before the delegate that cat food manufacturers typically use purple on many pet care products - not as the dominant colour, but to distinguish between different flavours of pet food, for example. The court held that the delegate had not, therefore, relied on the false statement in accepting the mark. Thus, the causal connection between the suggested false statement and the acceptance of the application under Section 62(b) was not established. 

This case reflects an increase in the protection of colour marks in Australia. However, it shows the need to demonstrate that a colour is being used as a trademark (distinguishing the goods from those of competitors, as opposed to merely signifying a particular flavour), and that registration does not prevent non-trademark use of the particular colour. It also serves as an important reminder to ensure the accuracy of statements used in evidence in trademark hearings and court proceedings.

Tim Golder and Sandi Montalto, Allens Arthur Robinson, Melbourne

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