As brand association by colour increasingly forms part of business marketing strategies, a comparison of trade mark registration and consumer protection laws drawn from two recent decisions of the full court of the Federal Court suggest that consumer protection laws provide the most viable mechanism for businesses to lay claim to colour.
In Woolworths –v– BP  FCAFC 132, the primary issue was whether BP’s use of the colour green as the predominant colour in association with service stations would support the requisite degree of distinctiveness prescribed by trade mark registration legislation. The court found that an application for trade mark registration in the colour green when used as the predominant colour in association with service stations lacked distinctiveness, given that BP had itself usually used green with yellow as a supplement. A trade mark restricted to the combined use of green and yellow would not effectuate the commercial outcome desired by BP – to preclude Woolworths’ use of the colour green in its service stations in direct competition with BP.
By contrast, the full Federal Court’s decision in May in Cadbury –v– Darrell Lea  FCAFC 70 has created new hope for businesses in the position of BP. Cadbury brought an action against Darrell Lea as a result of the latter’s use of the colour purple in association with chocolate. The court found that s52 of the Trade Practices Act 1974 (Cth), misleading and deceptive conduct, may form the basis of an action where branding elements, such as colour, used by one business have been employed by another. To succeed however, the branding element must "have been identified in a special way with that trader in the minds of the members of the public". Significantly, while the predominant use of a colour will not satisfy the requisite test of distinctiveness required to register a trade mark; s52 has now been interpreted as protecting businesses in respect of their use of colour as a branding element, provided that such use is identified in the consumer mind as representing the branding of the aggrieved trader.
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