Mars Australia Pty Ltd (“Mars”) filed Trade Mark Application no. 932937 on 4 November 2002 to register its trade mark for the Colour Purple in relation to: “Foodstuffs for domestic pets and additives for such foodstuffs” in class 31. The application was accepted following an ex parte hearing in relation to registrability. The application was successfully opposed by Societe des Produits Nestle SA (“Nestle”). Mars then instituted an appeal to the Federal Court.
The parties settled the dispute and proposed that the Court make Orders to the effect that the appeal be allowed, the decision of the Delegate be set aside and the trade mark proceed to registration in relation to the amended specification being “cat food and additives for cat food”.
The Court considered two grounds of opposition as set out below:
Firstly, the Court considered the ground of opposition that a registration may be opposed on the ground that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars (Section 62(b) of the Trade Marks Act 1995).
It was found by Bennett J that statements made in the supporting evidence to the effect that no other manufacturers used Purple for pet food were false. However, there was other evidence before the Examiner referring to use of the Colour Purple on pet food products sold in supermarkets. On this basis, and perhaps surprisingly, the Court held that it cannot be concluded that the Examiner accepted the application “on the basis” of the false representations contained in the lead declaration filed in support of the application. In other words, there was no causal or connection between the suggested false statement and acceptance of the application according to the Court. Despite this finding, the case serves as a useful reminder to practitioners and declarants that great care should be taken to check the veracity of statements made under oath.
Secondly, the Court considered whether the trade mark was capable of distinguishing the applicant’s goods (Section 41 of the Trade Marks Act 1995).
In this regard, Mars relied upon substantial use and promotion of the Colour Purple in Australia from about April 2000. The Court found that the Colour Purple was the predominant colour used on the product packaging for all varieties of Whiskas cat food creating a stronger shelf-blocking effect when displayed on shelves.
It was noted that the colour was carefully chosen and that the precise Colour Purple was specifically developed to create a stronger brand identity for the Whiskas product.
Despite the fact that registrability is to be determined as at the filing date (4 November 2002), the Court found that a survey conducted on behalf of Mars in May 2009 supported the submission that Whiskas Colour Purple functioned as a badge of origin in relation to the goods.
Once again, this conclusion is rather surprising as it has been notoriously difficult to succeed in establishing distinctiveness of a mark on the basis of survey evidence (particularly if the survey was conducted subsequent to the filing date of the application).
While the Court found that other pet food traders used a similar Colour Purple on packaging, Bennett J found that such use on specific varieties within a product range did not amount to trade mark use. Therefore, the Judge found that Whiskas Colour Purple was capable of distinguishing Mars’ goods (as amended) as at the priority date.
Accordingly, Orders were made that the decision of the Delegate be set aside and the application proceed to registration with the amended specification of goods.