Colouring in a grey area of trademark law

Australia

Ruling for the first time on the issue of single-colour trademarks, the Federal Court has held that such a mark, if not having an inherent capacity to distinguish, may still be registered if it has a factual capacity to distinguish at the date of application.

Philmac Pty Ltd applied to register the colour terracotta as a trademark in relation to "non-metallic rigid irrigation pipe fittings and connectors". The registrar of trademarks rejected the application on the basis that the mark was not capable of distinguishing Philmac's goods as required by Section 41 of the Trademarks Act 1995. Philmac appealed to the Federal Court.

The court ruled that the colour terracotta does not have an inherent capacity to distinguish. The court reasoned that a single-colour trademark would only be inherently distinctive where:

  • the colour does not serve a utilitarian function (eg, light reflection or heat absorption);
     
  • the colour does not serve an ornamental function (eg, it does not convey a recognized meaning such as heat, danger or environmentalism);
     
  • the colour does not serve an economic function (eg, it is not the naturally occurring colour of a product); and
     
  • the colour mark is not sought to be registered in respect of goods in a market in which there is a proven competitive need for the use of colour.

The court found that none of the first three points applied. It also found that other manufacturers in this particular market may need to use colours and terracotta would be a natural choice. Philmac itself admitted to have chosen the colour because it is an earthy colour considered useful for marketing purposes. Therefore, ruled the court, the mark was not inherently adapted to distinguish.

Nevertheless, the court found that the evidence of use before and at the date of filing showed that the colour did in fact distinguish Philmac's goods, especially since no other manufacturer of goods in the same class was using colour in a manner that would diminish the factual distinctiveness of Philmac's fittings. As some of the goods for which Philmac was seeking registration are not visible to the public, these goods may not be distinguished by the colour. Accordingly, the court ordered in a subsequent ruling that the application be amended and the trademark registered.

This decision brings the treatment of colour trademarks in line with marks such as words, logos and (since the Kenman decision) shapes, by recognizing that they may be prima facie distinctive. It will be interesting to see how this decision is interpreted in the appeal by Cadbury against the registrar's refusal to register the colour purple in relation to chocolate and chocolate confectionery (see 3M and Cadbury appeal colour mark decisions).

Celia Cumming, Bill Ladas and Scott Widmer, Freehills, Melbourne

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