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 far:
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 occur.
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 Justice Heerey.
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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