• Steve Davey

Can I register a colour as a trade mark?


A colour, by itself or in combination with other colours and/or any of the other features which fall within the definition of a sign, may be used as a trade mark. For example, a trade mark may consist of a coloured label or ticket which incorporates other signs, or it may consist of a colour or colours applied to the goods themselves. Colour may also be an aspect of packaging which is used as a trade mark. An example here is a particular coloured wrapper or box used to cover the goods. In all cases the trade mark will only be registrable if, taken as a whole, it is capable of distinguishing the applicant's goods and/or services from those of other traders.

Representations and descriptions of colour marks

An application for a colour or colours as a trade mark must include a clear and concise description of the trade mark as an endorsement to the application.

A pictorial representation showing the colour claimed and the manner in which it is to be applied to the goods or packaging should also be supplied, especially in cases where the description is complex.

An example of the actual colour or colour combination claimed must be supplied in all cases.

Combinations of colours applied to the goods or their packaging

As with any other sign, a combination of colours being claimed as a trade mark must pass the accepted tests for adaptation to distinguish.

The test for whether a colour is a trade mark was set out by Kitto J in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd, (the Barrier Cream case (1965) 112 CLR 537 at 555) and is paraphrased as follows:

"The question to be asked in order to test whether a [colour] is adapted to distinguish one trader's goods from the goods of all others is whether the [colour] is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods."

The colour/s may be applied directly to the goods, or may form part of the overall appearance of the packaging.

A combination of colours may be applied directly to the surface of the goods. For example, copper and black colours applied to batteries; maroon and gold colours as applied to pharmaceutical capsules; green and white colours applied to pharmaceutical capsules.

The Trade Marks Office accepted some of these trade marks on the basis of evidence, thereby acknowledging that such trade marks may have some degree of inherent adaptation to distinguish.

Trade marks consisting of two or three colours applied directly to the goods are likely to possess a greater degree of inherent adaptation than single colours and in some cases may be prima facie acceptable.

The question, as always, will be the degree to which other traders are likely to want to use the colours and the answer should stem from a consideration of what is normal in the market place or relevant trade. For instance, in the case of "roofing nails" which are typically coloured after the metal they are made from (steel, zinc etc), the colour "grey" would be to no extent inherently adapted to distinguish whereas a combination of "pink" and "green" for these goods is arguably not as commonplace. On the other hand, it is unlikely that two-coloured stripes would be prima facie acceptable for clothing in class 25, manchester in class 24 or for wrapping papers in class 16.

Similarly, combinations of colours applied to the packaging of goods should be considered in light of what is normal in the relevant trade or marketplace.

A trade mark may also consist of a single all over colour applied to the surface of goods or to the container or packaging in which they are marketed.

In the past there was considerable discussion in relation to whether colour applied in this manner was capable of functioning as a trade mark. The application of a simple colour scheme to goods which are normally coloured is unlikely to amount to a registrable trade mark. However, there are examples of traders successfully using a single colour to denote the origin of their goods and with sufficient evidentiary support, a single colour applied to the goods may indeed be found to be registrable. Examples are the colour ‘maroon’ for electronic storage batteries, the colour ‘orange’ for the labels on sparkling wines and the colour ‘terracotta’ for irrigation pipe connectors (the Terracotta decision, Philmac Pty Limited v The Registrar of Trade Marks [2002] FCA 1551). In these cases, objections were initially taken and there was a heavy onus on the applicants to submit persuasive evidence showing these colours had gone beyond being merely the colour applied to goods but had become trade marks.

Single colour applied to the goods

A single colour applied to the surface of goods that are normally coloured will generally be regarded as being devoid of inherent adaptation to distinguish. This view was supported by Mansfield J in the Terracotta decision where he decided that the colour ‘terracotta’ was devoid of adaptation to distinguish for the goods the applicant was claiming.

While his Honour decided that the particular case should proceed under the provisions of (as prior to 15 April 2013) subsection 41(6), he went on to discuss the issue of a single colour applied directly to the goods, and to give some guidelines for assessing these types of marks (paragraph 65).

"...I do not mean to suggest that a single colour applied to goods may never be inherently adapted to distinguish an applicant's goods from those of other traders. Such a conclusion would be inconsistent with the provisions of the Act that contemplate that a colour may serve as a trade mark. The definition of a sign in the Act provides that a colour may be a sign in its own right, and not merely as an element of another species of sign such as a logo or aspect of packaging. It would therefore not be in accordance with the Act to reject a trade mark purely on the basis that rejection would secure a monopoly over part of what is in reality a limited resource. However, having regard to the above principles and the test in Clark Equipment, I consider that the circumstances in which a colour applied to goods will be inherently adapted to distinguish are limited to the following:.

* the colour does not serve a utilitarian function: that is, it does not physically or chemically produce an effect such as light reflection, heat absorption or the like;

* the colour does not serve an ornamental function: that is, it does not convey a recognised meaning such as the denotation of heat or danger or environmentalism;

* the colour does not serve an economic function: that is, it is not the naturally occurring colour of a product and registration of that colour in respect of that product would not thereby submit competing traders to extra expense or extraordinary manufacturing processes in order to avoid infringement;

* the colour mark is not sought to be registered in respect of goods in a market in which there is a proven competitive need for the use of colour, and in which, having regard to the colour chosen and the goods on which it is sought to be applied, other properly motivated traders might naturally think of the colour [and] use it in a similar manner in respect of their goods."

Single colour applied to packaging

Similarly, a colour used as the overall colour of packaging is unlikely to be adapted to distinguish for the same reasoning as the colour on the goods themselves. Again, the onus lies with the applicant to demonstrate that the colour is capable of distinguishing the applicant's goods from those of other traders. This is best done by demonstrating that the colour is regarded in the marketplace as a trade mark rather than merely the way the packaging is presented.

Colours claimed as trade marks for services

An applicant may make a claim for a colour or colours as a trade mark for use in respect of services. Again, a colour or combination of colours used in respect of services meets the description of a sign for the purposes of the Act.

As with applications for goods, a clear description of the nature of the trade mark is required so that its scope is clearly defined. This description must identify how the colours are used in respect of the services claimed. For example, a red swatch attached to an application form together with a claim for "the colour red, as depicted in the example attached to the application" in respect of retailing services is not sufficient, as it does not explain how the colour is used in respect of the services. A more acceptable description for retailing services would be: "The trade mark consists of the colour red applied in a single broad stripe to the fascias and doors of buildings. The colour and configuration of the trade mark are shown in the examples attached to the application form". The accompanying examples would need to clearly show how the broad stripe is applied to the buildings and doors.

Registrability of colour as trade marks

The preceding paragraphs have discussed the use of single colours, and combinations of colours as trade marks. The Courts have determined that a single colour is unlikely to be inherently adapted to distinguish, whereas a combination of colours may have at least some degree of inherent adaptation.

Each application must be examined in the light of the market in which the trade mark is to be used.

Functionality and colour

There are a number of situations in which a colour or colour combination may be regarded as functional, and therefore not inherently adapted to distinguish an applicant's goods or services from those of others.

Colours providing a particular technical result

A colour may also be functional if it serves to provide a particular technical result for the goods concerned. The colour black for solar power collectors and associated piping is an example here. Similarly, the colours silver or white in situations where heat or light reflection is required would be regarded as functional. An example of this circumstance is a silver colour for building insulation sheeting to go under roofing tiles.

Colours conveying a generally accepted meaning

A colour may be functional if it has developed a generally accepted meaning in the trade or the wider community. For example, yellow or orange colours are generally accepted for safety signs and red for a hazard warning sign. Red is likewise the generally accepted colour to denote a fire extinguisher and its whereabouts. These colours serve a functional purpose in respect of these items, or goods and services likely to use such items.

Colours which are common to the trade

Colours which are commonly used with the particular trade are not likely to be capable of distinguishing one trader's goods from those of another.

Colours which are the natural colour of goods

A colour may be common to the trade if it is the natural colour of the product itself or the natural colour of the product because of the most usual manufacturing process. The granting of a monopoly in such a colour may interfere with the ability of other traders to produce the goods by normal manufacturing procedures, and may thereby force a change to a more costly production method to avoid producing goods in their natural colour. For example, a monopoly cannot be granted in the natural colour of hemp rope or seagrass matting because consumers would be unable to distinguish the goods of the trade mark owner from those of other producers whose manufacturing processes result in goods of the same colour. Other producers would be obliged to produce their goods in different colours via a possibly more expensive process. The natural colours have no inherent adaptation to distinguish for the goods in question.

Colours for which there is a competitive need

If there is a proven competitive need for the use of colour in a particular market, the colour is likely to be difficult to register. A colour may fall into this category if manufacturers within the particular industry do not typically colour their products, or the accepted standard is one particular colour. Justice Mansfield considered that, in an industry where the accepted colour for the particular goods was black, and considering that “the range of colours available to an honestly motivated trader is in fact limited”, the terracotta colour or any similar terracotta shade that might be deceptively similar to that colour, was the kind of colour that another honest trader might legitimately desire to apply to his similar goods.

Note that in a number of industries, including the irrigation pipe industry, colours are used as a form of coding for measurements, performance characteristics or to differentiate between, for example, imperial and metric fittings.

Evidence

For a colour or combination of colours to be recognised as a trade mark, the applicant needs to be promoting the colour/s as something apart from the goods or their packaging. Entries in catalogues or brochures showing pictures of the goods in the colour claimed are unlikely to be sufficient unless that use shows there has been a deliberate intent to educate the public as to the trade mark significance of the colour in question. If research or information from the applicant demonstrates that the usual colour for the goods in question is typically something quite different, these examples may be more persuasive.

Examples of advertising text referring specifically to the colour/s in respect of the goods will be most useful. Statements such as "Look for the orange and green coloured box" or "Unusual colours; exceptional goods" are the type of promotional terms that may assist an applicant in demonstrating that the colour/s have the capacity to distinguish. Consumer surveys based on recognition of the colour/s and declarations from the trade and from consumers attesting to a recognition of the colour/s as an indicator of trade source may also be valuable. Analogous to the Seahorse case, the applicant needs to be using the colour as a badge of origin rather than just a decoration, and its evidence of use should demonstrate that this is the case.


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