PURPLE word mark refused for confectionery and bakery goods

In Cadbury Limited v Effem Foods Limited (CA274/05 [2007] NZCA 303, May 16 2007), the New Zealand Court of Appeal has:

• confirmed that there is a separate requirement for distinctiveness - even though a trademark may not be descriptive of the specified goods;
  
  
• clarified the scope of the test for determining distinctiveness; and
  
  
• held that a negative restriction relating to a characteristic of goods (as opposed to a category of goods) will usually be too uncertain to be allowable.

Cadbury Limited applied to register the word 'purple' as a trademark for a wide variety of confectionery and bakery goods in Class 30 of the Nice Classification, with the qualification that "none of the foregoing goods [are] purple coloured". The word had not been used as a trademark prior to the application date. Thus, registrability was dependent on PURPLE possessing a degree of inherent distinctiveness, so as to be "inherently adapted to distinguish" and "inherently capable of distinguishing" Cadbury's goods from those of other traders.

Effem Foods Limited, a Mars company, opposed the application. To support its opposition Effem provided evidence of use of purple colours for goods and packaging for the types of products included in Cadbury's specification. The commissioner of trademarks rejected Effem's opposition.

Effem appealed to the High Court. McKenzie J held that the test of distinctiveness set out in W & G du Cros Ltd's Applications ((1913) 30 RPC 660) did not require that possible legitimate use by other traders of PURPLE in relation to non-purple goods only should be considered - "and would be quite unworkable in this case". The judge gave the example of use of the term 'purple ice cream' in an advertisement:

"[17]… there would be nothing inherent in that phrase to indicate whether that was the proprietor's ice cream, with purple being used as a trademark, or another trader's ice cream with purple being used as a descriptive word."

The judge assumed that PURPLE was not descriptive of Cadbury's goods, but held that the word was not inherently adapted to distinguish and not capable of distinguishing Cadbury's goods. (Cadbury accepted that the exclusion of purple-coloured goods included goods in purple packaging.)

The Court of Appeal rejected Cadbury's appeal from that decision. The court found that PURPLE did have a direct reference to the character or quality of goods in the specification, because people's perceptions of colour differ (is 'purple' apt to describe shades such as lilac, lavender, mauve or violet?) and because it was not clear how much purple needed to be on goods before they can be described as purple.

The court agreed with the first instance judge that there is a separate requirement of distinctiveness - even if the trademark is not descriptive of the specified goods or services - because defining goods that are to be distinguishable by reference to a characteristic which does not alter their inherent nature does not achieve distinctiveness.

The court approved a proposed policy guideline by the Intellectual Property Office of New Zealand, which would refuse to allow qualifications to specifications by excluding goods or services according to whether or not they possess a particular characteristic. In doing so, the court followed the European Court of Justice's POSTKANTOOR (C-363/99) [2004] ETMR 57 decision and that in Croom's Trademark Application [2005] RPC 2:

"[40]… to the extent that they stand for the proposition that an exclusion based on the particular characteristics of goods or services covered by any registration, as against the types of goods or services, will, in most cases, be too uncertain as to scope to be allowable."

Barbara Sullivan, Henry Hughes Ltd, Wellington, and Rhonda Steele, Mars Inc, Sydney