Discount Drugstores Pty Ltd v Registrar of Trade Marks [2015] FCA 1159

Discount Drugstores Pty Ltd succeeded in an appeal to the Federal Court of Australia in relation to the registrability of the colours Purple and Orange in relation to pharmacy services. The case is unusual both in the way in which the case was decided, and the broad scope of protection afforded to the company.

Mediated Outcome for Discount Drugstore Trade Mark appeal

In the course of the appeal proceedings, the Registrar of Trade Marks decided that there were no longer grounds for rejecting the Application following consideration of additional evidence (not discussed in the case) which was filed on behalf of Discount Drug Stores. This decision was reached in the context of the parties attending mediation following the filing of additional evidence. It is unusual for cases involving IP Australia and relating to registrability of a trade mark to proceed on the basis of a mediated outcome, without any substantive discussion of the merits of the matter by the Court.

The consequence is that practitioners are left in the dark as to the nature and extent of the evidence which was found to support the distinctiveness of the colour mark. The Delegate of IP Australia who originally decided against registration of the trade mark made adverse comments with regard to the absence of market survey evidence. It is not apparent from the Federal Court decision whether in fact Discount Drugstores then obtained and filed market survey evidence to support the trade mark application.

The decision therefore has relatively limited value as a precedent for other colour marks as it is not apparent what evidence was accepted as supporting the mark's distinctiveness in relation to pharmacy services.

Broad and Vague Trade Mark Registration Granted

The Application was accepted for registration by the Federal Court with the following broad endorsement:

"The trade mark consists of the colours PURPLE (Pantone 2612) and ORANGE (Pantone 1505) as shown in the representation attached to the application, used in combination where either colour forms a significant proportion of the overall combination on banners, signs, walls, and counters in retail stores, on staff uniforms, and on promotional and advertising material, including as shown in the illustrative examples, all used in connection with the services covered by the application".

Lessons for Trade Mark Owners

In general, it is challenging to register colours as trade marks, as it is difficult for a trader to establish that its colour or colours distinguish its goods and services from the goods or services of others. This decision is somewhat surprising in that it permits a trade mark registration which gives very broad monopoly rights in relation to an infinite range of combinations of the colours Purple and Orange, including the examples of store exteriors shown below.

(Click here to view photos)

Because of the breadth of the trade mark registration, it is likely to be difficult for any potential infringer to appreciate the precise scope of the trade mark registration. However, it remains to be seen if the scope and breadth of the registration will withstand legal challenge, if tested.