There has been a growing number of colour trade mark registrations appearing in the Australian Register of Trade Marks, and the recent court decision upholding BP’s trade mark registration for green as the dominant colour for a petrol station has provided some further support for such rights.
The Cadbury v Darrell Lea decision is the first Australian decision to consider the enforceability of rights in a colour where those rights are not based upon a trade mark registration. As the court noted, such cases are always highly fact specific. In this case, there were disputes about the evidence resulting in some of Cadbury’s evidence not being admitted, and on the basis of the remaining evidence that was admitted, the court was not satisfied that Darrell Lea’s use of the colour purple would be likely to mislead consumers.
Background
Cadbury has used purple packaging for chocolate in Australia since the 1920s, but started to focus more heavily on its use of that colour from the early to mid-1990s. This focus included prominent use of purple in point of sale materials, catalogues, and advertising. Cadbury has also sought to register a number of trade marks for the colour purple, and in 2003 it was finally successful in obtaining acceptance of a trade mark application for the colour purple when used as the dominant colour of packaging for chocolate. This application is under opposition, and has therefore not yet proceeded to registration (and so cannot yet be litigated).
Darrell Lea also has a long history of selling chocolate in Australia, and has used a variety of colours in its packaging (as has Cadbury). The particular conduct that Cadbury complained about was Darrell Lea’s use of purple and copper as the primary colour scheme for its Christmas promotions, from 2000 to 2004.
Cadbury said that Darrell Lea’s conduct represented to consumers that its products were licensed by, or associated with Cadbury. Cadbury based its case on the tort of passing off and contravention of sections 52 and 53 of the Trade Practices Act 1974.
The Evidence
At trial, Cadbury principally relied upon a survey of 102 people who had been randomly selected. They were asked questions, including what brand they thought was best represented by chocolate presented to them wrapped in each of blue, gold, purple, red and green. The evidence showed a higher association between purple and Cadbury than for other colours, and the judge found that there was a ‘wide awareness’ among Australian consumers of Cadbury’s use of purple.
The weight of this evidence was reduced, however, by the fact that it did not address how consumers reacted to the colour of packaging when the chocolate products also bore a word or logo trade mark (for example ‘Cadbury’ or ‘Darrell Lea’). The judge also said that direct evidence of any consumer confusion would have had far greater weight, and he was also influenced by the fact that Darrell Lea’s conduct had been ongoing for more than four years, which he said should have given Cadbury plenty of opportunity to collect such evidence.
Another important fact was that Cadbury did not prove to the judge that Darrell Lea had adopted the use of purple for the purpose of creating any association with Cadbury. Justice Heerey said that any such evidence may have persuaded the court to find, in effect, that Darrell Lea’s attempts to create an association with Cadbury were successful. Instead, Darrell Lea’s evidence explained that its motivations for using that colour scheme were different, and not connected with Cadbury in any way.
Darrell Lea also put on evidence to show that a number of companies had sold chocolate and confectionery products in Australia using purple packaging.
The Court’s Decision
Justice Heerey said that while consumers might associate purple with Cadbury, this did not mean that a consumer would think that chocolate packaged in purple must be made by, or licensed by Cadbury. Given Darrell Lea’s use of its distinctive name on its packaging, the court did not think that consumers were likely to think that those products were licensed by or associated with Cadbury.
Exclusive Rights In A Colour
Justice Heerey noted that Cadbury virtually always made prominent use of its distinctive ‘Cadbury’ trade mark, and that it combined this with its use of the colour purple, and its ‘glass and a half’ device to create its overall ‘brand architecture’. The components of this ‘architecture’ were said by Justice Heerey to be inextricably intertwined, creating a stronger total impact. The difficulty for Cadbury is that this combined ‘brand architecture’ does not teach consumers to make a conclusion about a product’s trade source from colour alone, according to the judge. For a passing off and trade pactices case, this created considerable difficulties.
Cadbury has clearly focused heavily on developing a reputation in the colour purple, and positioning itself to be able to exercise exclusive rights to that colour. The fact that even Cadbury was unsuccessful in establishing a passing off and trade practices action against Darrell Lea illustrates the difficulties in obtaining exclusive rights to a colour.
The next, and interesting, chapter in this story will be whether Cadbury is able to successfully defend the opposition to registration of its colour trade mark. The enforcement of such a trade mark registration (if granted), even on the same facts as in this case, would raise quite different issues and could, in fact, yield a different result for Cadbury. This decision itself can also be appealed.
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