Australia: Colour Yellow Is Not Inherently Distinctive

Last Updated: 6 June 2003
Article by Georgina Hey

The Australian Trade Marks Office (Office) has issued a decision in relation to the inherent registrability of a single colour trade mark, following the decision of Justice Mansfield last December in Philmac Pty Limited v The Registrar of Trade Marks.

Justice Mansfield in Philmac delineated four circumstances where a colour trade mark would not be inherently distinctive. These are when the colour serves a utilitarian, ornamental or economic function, or when a competitive need to use the colour exists. In considering the trade mark application by Luk Lamellen und Kupplungsbau GmbH (Applicant), the Office applied these criteria to find that the colour yellow was not inherently capable of distinguishing the Applicant's goods.

The Applicant had applied to register their trade mark in relation to, among other things, oil, grease, fuel and vehicle clutches. The description of the mark read as follows:
'The mark consists of yellow colour applied to the goods, as shown in the representation attached to the application.'
The evidence provided by the Applicant attested to use of the colour yellow, both singly and in combination with the colour black, in relation to aspects of packaging of goods in Australia. The Applicant also submitted evidence of overseas trade mark registrations along with letters from members of the relevant trade attesting to their use of the mark.

The decision
Description of the mark
The Hearing Officer began by noting that the evidence submitted by the Applicant does not accord with the description of the mark contained on the application. This was because the evidence of use of the colour yellow related to the packaging of goods, and not to the goods themselves.

Therefore, the description of the mark would need to be amended to refer to the colour yellow applied to the packaging of goods, and not the goods per se.

Inherent adaptation to distinguish
When dealing with the issue of inherent adaptation to distinguish, the Hearing Officer applied the criteria set out by Justice Mansfield in Philmac.

The Hearing Officer was quickly satisfied that the colour yellow does not form any utilitarian, ornamental or economic function in relation to the packaging of goods. Nor was the colour felt to convey any recognised meaning in relation to the goods specified on the trade mark application.

However, when considering whether a competitive need to use the colour existed, the Hearing Office largely relied on a internet search to find that yellow, a primary colour, is readily and commonly used in the packaging of goods and services, including packaging for automotive parts. The substance of the information located by the internet search is not expanded upon in the decision. There is also no indication that the Hearing Officer limited the internet search to only use of the colour yellow by traders in Australia.

This highlights an ongoing issue in relation to the benefits of internet access and use by the Office of internet search results obtained from across the globe. In some instances whether or not these results can be taken as indicating a competitive need to use a trade mark in the Australian market is perhaps questionable. Without reference to the particular search results obtained in this instance it is difficult to draw a conclusion either way. It can, however, be said that the limited number of colours available for use presumably lowers the threshold of what constitutes a competitive need to use the colour yellow.

In any event, the Hearing Officer declared the colour yellow to have no inherent adaptation to distinguish the designated goods. Having failed the test of inherent adaptation to distinguish, to be registrable it was necessary for the evidence supplied by the Applicant to show factual distinctiveness acquired through use.

The sales figures provided by the Applicant were given no weight as no unit costs were provided, nor was any market share indicated. In addition, the overseas trade mark registrations were not felt to assist in demonstrating distinctiveness in Australia.

This decision highlights some of the difficulties faced by colour trade mark applicants.

Current Office practice requires a high degree of accuracy in the descriptions accompanying colour trade mark applications. This description must be in accordance with how the mark has been used in the trade. This Office practice fails to recognise the broader concept of what constitutes a colour trade mark, as compared to an aspect of packaging.

The Federal Court decision in Philmac clarified instances where colours per se may be inherently adapted to distinguish the goods of one trader from another. In relation to the subject application, the Office had no difficulty in holding that the colour yellow does not serve a utilitarian, ornamental, or economic function. However, the Office required little convincing that there existed a competitive need for other traders to be free to use the colour. This decision highlights an apparently low threshold for determining whether a competitive need exists for traders to be able to use a particular colour in relation to certain goods or services being applied by the Office.

For this reason, it will continue to be necessary for colour trade mark applicants to file evidence of acquired factual distinctiveness. This emphasises the need for brand owners to ensure that their colour trade marks are used appropriately. This includes use that clearly demonstrates that the colour is a trade mark, and use that functions as a badge of origin.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.

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