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- Generic colours can never be trade marks, for example red for cola beverages or yellow for printed directories. Descriptive colours, such as terracotta for hosepipe connectors, can be registered, but only if they have acquired a secondary meaning.
- The more unusual the colour, the easier it will be to register - because competitors will not necessarily need or wish to use the same colour.
- The extent of use required to demonstrate reputation, such as the colour purple for chocolate wrapping, needs to be overwhelming.
- Courts generally find survey evidence unsatisfactory; particular effort must be made to demonstrate separate reputation between colour and word marks – for example the colour purple and the house mark Cadbury.
- Educating the public that a colour is a trade mark, rather than for decorative, advertising, functional or descriptive purposes should be started well before filing for registration. Working with your trade mark attorney to finesse a marketing and promotion strategy for the colour will improve registration prospects in the longer term.
When the Australian Trade Marks Act 1995 (Cth) introduced a new definition of a “sign”, making specific reference to colour, there was some expectation by trade mark attorneys that registration of colours would become easier. However, the success rate for registration of colour marks is about 10%. The IP Australia database lists 1,322 colour mark applications filed and only 308 resulting registrations. Many of the registrations are for:
- A combination of colours together with distinctive shape of goods
- Colour in a particular position - (a red stripe on the heel of shoes)
- Overall colour for the goods themselves, which colour is unusual for such goods (pink insulation bats, or baby blue casings for electrical tools)
- Combination of arbitrary colours with words or patterns
The fact that there are only a handful of marks registered for a single colour or combination of colours, and which do not include a shape or position or word or device as part of the mark, indicates the very high threshold set by IP Australia for registration of single colour marks.
The decade from 2000 to 2010 gave us a number of Federal Court decisions involving single colour marks, namely the Cadbury decision for the colour PURPLE Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd  FCA 446, which colour was used as a substantial colour for packaging for chocolate and confectionery, and the BP decision BP Plc v Woolworths Limited  1362 for the colour GREEN for service station indicia. The mark consists of the colour GREEN, together with YELLOW, applied to buildings, petrol pumps, signage, all used in service station complexes.
The reluctance of IP Australia and the courts to allow registration of single colour marks reflects a general discomfort in granting a monopoly for a colour, which could impede the marketing needs of other traders. Moreover, registered owners are yet to test their monopoly rights by way of infringement proceedings and just how extensively rights in colour marks will be interpreted is unknown. In Australia, Cadbury has registered various purple marks, presumably to clarify its rights across a number of shades of purple.
The Intellectual Property Laws Amendment Bill (Raising The Bar Act) 2012 (CTH) which came into force on 15 April 2013, introduced a presumption of trade mark registrability. Marks are presumed to be capable of distinguishing the applicant’s goods or services and should be registered unless there is a specific objection, and in cases where the Office is unsure whether the mark is capable of distinguishing, the doubt should be resolved in the applicant’s favour. The onus is no longer on the applicant to prove the mark is registerable.
The impact of this legislation is the clarification across a number of IP Australia decisions that single colour marks are not inherently adapted to distinguish, but can be shown to “distinguish in fact” for either goods or services, as a result of use and reputation in Australia. To prove acquired distinctiveness resulting from use of a colour mark, the onus is on the applicant to evidence distinctiveness to the satisfaction of the Registrar or the court, to meet the requirements of the s.41(5) or s.41(6) tests, either that the mark has some inherent capacity to distinguish (for example it is an unusual colour) or has no inherent capacity to distinguish as it is a generic or descriptive colour. Whether the evidentiary burden will need to satisfy the s.41 (5) or (6) tests will depend on the colour, the type of goods or services and the context of use.
What can be determined from the registered colour marks on the IP Australia database, is that primary colours and secondary colours, (red, blue, yellow, orange, purple and green), when used in respect of products that are coloured products, are considered to have no inherent adaptation to distinguish, and therefore, the evidence threshold for registration is extremely high.
For entities that use colour as the cornerstone of their corporate identity and to differentiate their products and services from their competitors, the question will arise as to whether to embark on, the not easy task, of obtaining registration of their colour mark. It would be valuable for the businesses, their marketing personnel and trade mark attorneys to work together to put together a protective strategy and to work towards the goal of trade mark registration.