First colour mark registered for fresh fruit

Australia

Queensland banana grower Fada Pty Ltd, trading as Pacific Coast Eco-Bananas, has successfully registered a trademark consisting of the colour red applied to the tips of fresh bananas - the first colour mark ever registered in Australia for fresh fruit.

Specific recognition that colour alone might constitute a registrable trademark was introduced by the Trademarks Act 1995. That act also made easier the registration of trademarks such as colours, shapes, sounds and perfumes by virtue of the fact that it removed the previous mandatory requirement for the showing of an inherent capacity to distinguish.

Notwithstanding these legislative changes, an applicant for registration of a colour as a trademark, particularly a single colour, has a difficult task. The Trademarks Office's Draft Manual of Practice and Procedure points out that a single colour applied to goods will have a very low level of inherent adaption to distinguish, and a heavy onus will be placed on an applicant to show that the colour does, or will in the future, distinguish the applicant's goods.

The first major obstacle faced by an applicant for registration of colour as a trademark is to show that the colour is used to distinguish the goods of the applicant from those of other traders. If that obstacle can be overcome, the further and often more difficult task is to show that the applicant's use of the colour has been such as to render it in fact distinctive to the applicant's goods. According to Paul Neunhoffer, the Queensland attorney who prosecuted the Eco-Bananas application before the Trademarks Office, acceptance of the application was achieved only after the submission of extensive evidence of (i) his client's use of the red marking, and (ii) the fact that such marking was intended to serve, and did serve, as a distinguishing feature of its bananas compared to those of other growers.

Eco-Bananas may have been assisted in finally convincing the registrar to accept its application by the Federal Court's decision in Philmac Pty Ltd v Registrar of Trademarks, in which Justice Mansfield upheld Philmac's appeal against the registrar's refusal to accept an application for a mark comprising the colour terracotta applied to the connecting inserts of plastic compression fittings for a particular class of irrigation pipe. The court, while finding that the Philmac mark was not inherently adapted to distinguish, was satisfied on the evidence that its extensive use and acceptance by customers as a distinguishing feature showed that the colour did in fact distinguish the goods as being those of Philmac (see Colouring in a grey area of trademark law).

For discussion of colour mark applications that have failed, see 3M and Cadbury appeal colour mark decisions.

Desmond J Ryan, Davies Collison Cave Solicitors, Melbourne

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