Following the landmark decision to allow Cadbury to register
five shades of purple as trade marks for its chocolate packaging
after a ten year dispute with Darrell Lea, brand owners are rushing
to secure their colour trade mark registrations. Wedgewood Limited
owns blue for ceramics and porcelain, Telstra has trade marked its
yellow phonebooks, Australian Postal Corporation owns yellow for
mail delivery services and Kraft Foods Limited owns silver for
Mars Australia Pty Ltd (Mars) recently won a
battle in the Federal Court against Societe de Produits Nestle SA
(Nestle) to secure trade mark protection for its
customised shade of purple (known as the Whiskas Purple) for its
cat food packaging.
Nestle successfully opposed the application in the Trade Marks
Office, however, Mars appealed the decision of the Delegate of
Registrar of Trade Marks to the Federal Court of Australia and was
successful after Nestle dropped its opposition in the final stages
of the Appeal. It's believed that Nestle struck a deal with
Mars to allow them to continue to use purple on their Purina brand
Mars, the owner of the popular cat food Whiskas had used its
Whiskas Purple colour on its cat food packaging and marketing
materials since 2000.
In November 2002, Mars applied for trade mark protection for its
Whiskas Purple. The application was accepted for registration,
however, Nestle opposed the application.
The Delegate of the Registrar of Trade Marks hearing the
opposition found that the Whiskas Purple mark did not distinguish
Mars' goods from the goods of other traders. Mars appealed
the decision to the Federal Court.
Justice Bennet considered whether the Whiskas Purple was capable
of distinguishing Whiskas products.
Justice Bennet observed that Mars "adopted an entirely
new colour as a trade mark and promoted it heavily from the outset
with... the clear intention of giving the colour a trade mark
Justice Bennet found that Whiskas Purple did function as a badge
of origin by which consumers identified Mars' goods in
contrast to the goods of other traders.
What does this decision mean for brand owners?
Brand owners should register their colour and other
non-traditional marks given the important role that they can play
in a company's overall branding strategy. However, it
should be noted that registration for a single colour will not be
It is very important to develop a good branding strategy from
the outset to ensure that the trade mark is promoted and used
extensively. A trade mark attorney should also be involved to
ensure that the distinctiveness of the trade mark colour can be
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
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