You may be aware that there has been an ongoing dispute between
Cadbury and Darrell Lea in relation to Darrell Lea's use of the
colour purple. Following is a brief summary of the proceedings so
The trade mark proceedings
In 1998, Cadbury applied to register the colour purple as a
trade mark in respect of "chocolate and chocolate
confectionary". IP Australia objected to the registration of
the mark on the basis that other traders are likely to wish to use
this colour in connection with such goods. Cadbury filed evidence
of use and the application was eventually accepted in respect of
"chocolate". Darrell Lea then opposed the application and
there was a hearing of the matter. The Hearing Officer concluded
that the trade mark was in fact capable of distinguishing
"block chocolate and boxed chocolate" and held that the
application may proceed to registration in respect of those goods.
Darrell Lea has appealed this decision to the Federal Court and a
decision is expected shortly.
The trade practices/passing off proceedings
Meanwhile... Cadbury instituted proceedings against Darrell Lea
alleging contravention of the Trade Practices Act 1974 and passing
off. In 2006, Justice Heerey found in favour of Darrell Lea finding
that Darrell Lea is entitled to use purple, or any other colour, as
long as it does not convey to the reasonable consumer the idea that
it or its products have some connection with Cadbury. Justice
Heerey was not satisfied that this had occurred, or was likely to
During the course of the trial, Justice Heerey refused to admit
certain evidence from marketing experts. Cadbury appealed this
decision to the Full Federal Court. In 2007, the Full Federal Court
held that Justice Heerey had erred in rejecting the evidence and
that, if the evidence had not been excluded, there may have been a
different outcome. The Full Court then remitted the matter to
On 11 April 2008, Justice Heerey handed down his further
decision. In this decision, he considered the marketing evidence
that he had originally excluded and revisited the findings that he
had made in his 2006 decision. Justice Heerey was not persuaded
that Darrell Lea, in using the colour purple, had passed off its
business or products as those of Cadbury or contravened the Trade
Practices Act 1974. His Honour was not satisfied that such use has
resulted, or would result, in a reasonable purchaser of chocolate
being misled or deceived. Cadbury has appealed this decision.
Stay tuned for further developments!
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