Australia: Can a Single Colour be Registered as a Trade Mark?

The Federal Court’s decision in Philmac Pty Limited v. The Registrar of Trade Marks [2002] FCA 1551 (13 December 2002) provides some useful guidance on the registrability of a single colour as a trade mark.

Philmac Pty Limited (Philmac) applied to register the colour terracotta as a trade mark for particular rural irrigation pipe fittings. The application was initially refused by the Registrar and Philmac appealed to the Federal Court.

Mansfield J reached the conclusion that this colour was not inherently adapted to distinguish these pipe fittings from those of other persons. His Honour had regard to the fact that the range of colours available to an honestly motivated trader is limited and that the colour terracotta, or any deceptively similar shade of terracotta, might naturally and legitimately occur to another trader as a choice of colour for application to these type of pipe fittings. In other words, Mansfield J applied the "colour depletion" argument. There was evidence of competitors using different colours on pipe fittings and in the broader irrigation market. Consequently, there was a competitive need for colours to remain available.

His Honour made it quite clear that he was not suggesting that a single colour applied to goods might never be inherently adapted to distinguish. He mentioned 4 circumstances where a single colour will be inherently registrable:

1. The colour does not serve a utilitarian function: that is, it does not physically or chemically produce an effect such as light reflection, heat absorption or the like;
2. The colour does not serve an ornamental function: that is, it does not convey a recognised meaning such as the denotation of heat or danger or environmentalism;
3. The colour does not serve an economic function: that is, it is not the naturally occurring colour of a product and registration of that colour in respect of that product would not thereby submit competing traders to extra expense or extraordinary manufacturing processes in order to avoid infringement; and
4. The colour mark is not sought to be registered in respect of goods in a market in which there is a proven competitive need for the use of colour, and in which, having regard to the colour chosen and the goods on which it is sought to be applied, other properly motivated traders might naturally think of the colour and use it in a similar manner in respect of their goods.

Although his Honour decided that the colour terracotta was not inherently adapted to function as a trade mark, he went on to find, on the facts, that Philmac had used this colour to such an extent before filing its trade mark application that it had become distinctive in fact of Philmac’s connecting inserts for plastic rural pipes. This factual distinctiveness was satisfied through sales of some millions of fittings over a period of approximately 4 years. Significantly, Mansfield J was not satisfied that the terracotta colour had become distinctive of Philmac’s split rings because they were not visible unless the fitting is dissembled and the internal components exposed and inspected.