Telecom left feeling blue over yellow colour mark expungement

Telecom Directories Limited's registration for the colour yellow has been expunged following a successful application by Cabbage Tree Press Limited (Telecom Directories Limited v Cabbage Tree Press Limited, T3/2007, January 29 2007).

Telecom has for many years used the colour yellow as an integral part of its branding. On May 10 1999 it filed an application to register the colour yellow for services in Class 35 of the Nice Classification, including business directory services and advertising.

The application was filed under the Trademarks Act 1953, which has since been replaced by the Trademarks Act 2002. Under New Zealand's trademark law, colours are potentially registrable as trademarks, provided that the applicant can show that the colour is distinctive for the goods or services in question by filing evidence of distinctiveness.

Initially the commissioner objected to the application on the basis that the mark was not distinctive for Telecom's services. Despite extensive argument, Telecom was not able to convince the commissioner to withdraw his objection regarding the eligibility of the mark for registration. At that stage Telecom was invited to file evidence of use to prove that the mark had become distinctive through Telecom's use of the mark over time. However, no evidence of use was filed. Even so, Telecom's application was accepted and advertised for opposition purposes. The application matured to registration on November 9 2001.

Cabbage Tree Press Limited applied for expungement of the mark on April 18 2002. The main grounds of the application were as follows:

• Telecom's mark was registered without sufficient cause and without meeting the requirements of registrability, and as such the mark should not be on the register;
  
  
• Single colour marks have a very low inherent adaptability or capability to distinguish and as the applicant for registration of such a mark, the onus was on Telecom to demonstrate that the mark was in fact adapted to or capable of distinguishing Telecom's services. Telecom did not discharge this onus of proof; and
  
  
• The mark was and is not registrable under the Trademarks Act 1953 for the services in question.

Under the Trademarks Act 1953, the register was divided into Part A - reserved for marks which are "adapted to distinguish" - and Part B - for marks which are less distinctive, but are "capable of distinguishing".

Cabbage Tree argued that the relevant provisions of the Trademarks Act 1953 were clear that a sign, being a colour mark, is not registrable except if there is evidence of distinctiveness as at the date of the application. The assistant commissioner agreed. An applicant seeking to register a colour mark in Part A is required to adduce evidence of distinctiveness as at the relevant date. To register the mark in Part B, the applicant must show that the mark is capable of distinguishing. In determining whether the mark is capable of distinguishing, the commissioner may have regard to the extent to which the mark is inherently capable of distinguishing and whether by reason of use the mark is in fact capable of distinguishing.

A single colour mark possesses a very low degree of inherent distinctiveness. As such, a substantial level of factual distinctiveness needs to be established in order to achieve registration. However, mere use of a colour does not amount to distinctiveness. The assistant commissioner stated that:

"In the perception of the relevant public it is not necessarily the same in the case of a colour per se as it is in the case of a word mark or logo … [While] the public may be accustomed to perceiving words or logos and signs identifying the commercial origin of goods or services, the same may not be the case where the sign (colour) forms part of the look of the goods or services. The use of the colour must be as a trademark and cause the public to see the colour as a badge of origin."

Cabbage Tree obtained a copy of the application file and filed this as part of its evidence. The application file showed that during the examination process, five examination reports were issued, but Telecom was unable to convince the examiner to withdraw the objections. No evidence of factual distinctiveness was filed by Telecom during the examination phase. However, the application still proceeded to registration. There was nothing on the file to suggest that the examiner's objections were withdrawn. The assistant commissioner noted that:

"In these circumstances I am unable to understand why this trademark proceeded to acceptance and registration … It is also evident that at the relevant date and also the date the application proceeded to registration, there was no evidence on file of factual distinctiveness of the colour yellow in relation to the registered proprietor's services the subject of its application."

Cabbage Tree was able to produce evidence that other traders had, at and before the relevant date, used the colour yellow for services similar to those of interest to Telecom. Whereas Telecom's evidence showed that it had been using the trademark in different shades of yellow, there was no evidence that this colour was itself promoted as a trademark. The use of the colour was in conjunction with one or more of Telecom's trademarks which were more prominent and Telecom's evidence of use was after the relevant date.

The assistant commissioner concluded that while the trademark was an important brand image for Telecom, it had not been used as a trademark or as a "badge of origin".

Telecom filed limited third-party evidence showing that the mark was factually distinctive of its services as at the date of application. Cabbage Tree submitted that this evidence could not be treated as the opinion of the public at large. The assistant commissioner held that the evidence was not enough to establish factual distinctiveness of the colour yellow in relation to Telecom's services. Cabbage Tree also noted that no survey evidence was submitted by Telecom.

In conclusion, Cabbage Tree's expungement application was successful. The assistant commissioner held that the yellow mark was entered on the register without sufficient cause and that it should be removed from the register.

The decision has not been appealed.

Carrick Robinson, James & Wells, Auckland