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colours
This page considers colours as trademarks.
It covers -
introduction
As noted in the preceding page of this profile, brand
owners have increasingly sought to register sounds, smells
and colours as trademarks.
The essential challenge is the task of proving that the
particular colour is unique and is closely associated
with the brand.
It is important to note that a particular colour mark
does not cover all possible uses. A trademark might thus
be issued for use of a specific colour (eg identified
on the Pantone scale) in relation to a particular product
- protected under a discrete trademark class - rather
than for every use of that colour. People in the US are
accordingly free to decorate their nails (or poodles)
and birthday cakes using a particular shade of pink without
infringing the 'pink batts' colour mark.
colours
Australian and overseas entities have sought to trademark
colours, including purple for chocolate and orange for
champagne.
The US Supreme Court held
in Qualitex Co. v Jacobson Products (1995) that
colour per se was registrable as a federal trademark.
In the US fibreglass group Owens-Corning was initially
unsuccessful in seeking to trademark the colour pink in
association with its pink insulation batts. It had spent
heavily on promotion (including licensing of the Pink
Panther cartoon character) and was able to demonstrate
that consumers associated the colour with its product.
Owens-Corning appealed rejection of decision and was eventually
successful in registering the colour in relation to the
particular product, with the court holding that
A
pink color mark registers for fibrous glass insulation
does not confer a 'monopoly' or act as a barrier to
entry in the market. It serves the classical trademark
function of indicating the origin of the goods, and
thereby protects the public.
That
has led some commentators to editorialise about 'color
wars' and fret that allowing "appropriation of a
single color" through a trade mark would result in
"exhaustion" of "all of the attractive
colors" in every trade mark class.
In action since the Qualitex case the Court of
Justice of the European Communities noted that although
there may be some media on which it is possible to record
a colour in permanent form, there are others (such as
paper) where the shade of the color cannot be protected
from the effects of time.
disputes
Some idea of challenges is provided by the following overseas
disputes, pre- and post- the Qualitex case -
Ambrit v. Kraft
805 F.2d 974, 993 (11th Cir. 1986)
US frozen dessert manufacturer Ambrit badged its products
in 'royal blue'. Kraft Foods, a multinational competing
in the same sector, adopted the same colour in their packaging
its desserts. Ambrit sued to prevent Kraft from using
blue.
US courts rejected Ambrit's claims as overambitious, indicating
that use of royal blue in packaging frozen desserts was
"functional" and thus could not be monopolised
as a trade mark. The appellate court commented that
Royal blue is a 'cool color;' it is suggestive of coldness
and used by a multitude of ice cream and frozen dessert
producers.
Campbell Soup v Armour
175 F.2d 795 (3d Cir.), cert. denied, 338 U.S. 847 (1949)
Campbell, whose signature red & white label was later
appropriated by pop artist Andy Warhol, claimed that use
of red & white in food packaging by competitor Armour
represented trade mark infringement.
Consistent with the Ambrit case, a US court was unimpressed,
with commenting
If
they may thus monopolize red in all of its shades, the
next manufacturer may monopolize orange in all of its
shades and the next yellow in the same way
The
Third Circuit noted that the 'Campbell red' was a different
shade to that of the Armour 'Carnation red', with the
competitors typically using the colours in different patterns
that would minimise confusion among ordinary consumers.
It commented that "a man cannot acquire a trademark
by color alone"; Campbell thus should not enjoy a
monopoly of a "functional color".
Dap v Color Tile Mfg.
In the 'Red Buckets' case US sealant manufacturer Dap
marketed its mastic in a red bucket, suing when competitor
Color Tile Manufacturing Inc packaged a sealant - aimed
at Dap's market - in a similar red bucket
A US federal district court granted protection to Dap
for its red bucket, finding that Dap used the red purely
as a unique indicator of the product. Neither the colour
nor the bucket were functional attributes of the sealant
(eg its strength, toxicity or other quality), in contrast
to the red used to indicate danger or urgency in relation
to fire engines and fire extinguishers. The "secondary
meaning" of the colour in relation to the sealant
was restricted to Dap's product, rather than to all sealants
or all sealants for tiles. Any copying by a competitor
of Dap's packaging must accordingly be an attempt to exploit
consumer recognition of Dap's products and create confusion
among buyers of sealants.
Life
Savers v. Curtiss Candy Co
182 F.2d 4 (7th Cir. 1950)
The US 7th Circuit in 1950 famously denied Life Savers
protection for its striped colours, noting that it was
a
general practice of the trade for hard candy manufacturers
to sell their candy in packages with multi-colored backgrounds
for their assorted flavored discs, and labels with single
colored background for their packages containing one
flavor of candy discs.
The
Court held that the multi-colored packaging was 'descriptive'
- serving as a ready identification of the flavour of
the candy in that wrapper. It accordingly concluded that
there had been no trademark infringement and that Curtiss
had not engaged in unfair competition.
Manz'sche Verlags v. Linde Verlag
In the 1997 'Red Lawbooks' case the Austrian Supreme Court
ruled that use on a series of books (or other class of
products) of the same colour previously used by a competitor
to identify its products party violated Section 9 of that
nation's unfair competition statute.
The decision prohibited the defendant from publishing
law books in the same shade of red as those plaintiff'.
The Court was unpersuaded by the defendant's demonstration
that publishers in other EU countries, notably Germany,
published series of legal texts in the very same shade
of red.
Australia
In Australia the Registrar of Trade Marks and the Federal
Court have accepted that a colour can satisfy the requirements
in the Trade Marks Act 1995 (Cth) for registration,
in particular s 41 (ie capacity to distinguish the particular
goods/service).
Attention has focused on the 2006
Federal Court decision in Cadbury Schweppes Pty Ltd
v Darrell Lea Chocolate Shops Pty Ltd (No 4), a dispute
between chocolate makers about use of the colour purple,
but it should be noted that a range of colours are being
used as marks in Australia.
Justice Heerey commented (consistent with the decision
in Campomar v Sociedad Limitada Nike International)
that
Cadbury
does not own the colour purple and does not have an
exclusive reputation in purple in connection with chocolate
in Australia. Darrell Lea is entitled to use purple,
or any other colour, as long as it does not convey to
the reasonable consumer the idea that it or its products
have some connection with Cadbury.
He
noted that Cadbury never uses the colour purple in isolation
as an indicium of trade; its products always bear the
Cadbury name in a distinctive script and its use of purple
is seen by consumers as inextricably bound up with the
Cadbury name in its distinctive script.
His assessment was reflected in Cadbury Schweppes
Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 8)
[2008] FCA 470 - here.
(The 2008 decision followed an appeal by Cadbury regarding
the admissibility of the expert evidence, with the Full
Federal Court remitting the matter to Heerey J for further
trial.)
In contrast the 2003 decision by Mansfield J in the Federal
Court held that Philmac, a maker of water industry equipment,
could register terracotta as a colour mark for non-metallic
rigid irrigation pipe fittings because it was capable
of distinguishing the company's products. Philmac had
appealed to the court after the Registrar of Trade Marks
rejected the application.
Mansfield laid down four conditions under which a colour
mark can be inherently distinctive -
- the
mark cannot be descriptive (ie cannot evoke a state
or condition)
-
the colour cannot be functional
- the
colour cannot be the result of the normal manufacturing
process
- the
colour cannot be used in an industry where colour is
an important element of competition within the industry
In
2010 Bennett J in Mars Australia Pty Ltd (formerly
Effem Foods Pty Ltd) v Societe des Produits Nestle SA
[2010] FCA
639 put aside the decision by the delegate of the
Registrar of Trade Marks, with Mars accordingly proceeding
with registration of its 'Whiskas Purple' (a shade of
purple "created from scratch") to identify cat
food. Registration had been rejected by the delegate and
opposed by Nestle.
studies
Colour marks have attracted increasing academic attention
during the past decade. Points of entry to the literature
include -
-
Jonathan Baker's 1996 'Correcting A Chromatic Aberration:
Qualitex Co v Jacobson Products Co' in 9 Harvard
Journal of Law & Technology 2
- Susan
Douglass' 1995 'Color Me Happy: The Supreme Court Rules
on the Trademark Registrability of Color' in 7 Journal
of Proprietary Rights 5
- Peter
Gillies' 2008 'Colour in Branding: Asserting a Monopoly
in a Colour for Marketing Purposes - The Cadbury-Darrell
Lea Litigation' (Macquarie Law Working Paper No. 2008-19)
paper
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