Mars v Nestlé: protection of colour marks in Australia

Authors: Tim Golder and Sandi Montalto (Allens Arthur Robinson, Melbourne)

Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA [2010] FCA 639 (22 June 2010)

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq116

The Federal Court of Australia has allowed Mars' Australian trade mark application for a particular shade of purple referred to as ‘Whiskas Purple’ to proceed to registration, in respect of cat food and additives for cat food.

Legal context

Mars considers, in the context of the registration of a colour mark, the application of section 41 of Australia's Trade Marks Act 1995 which allows the rejection of the registration of a mark on the grounds that it does not distinguish the applicant's goods and services from those of other persons.

Facts

The Whiskas Purple trade mark was specifically created ‘from scratch’ for the Mars group in Europe, and is used by Mars as the principal colour of its Whiskas cat food product packaging. Nestlé's opposition to Mars' application for registration of the mark succeeded before a delegate of the Registrar of Trade Marks (Effem Foods v Nestlé SA [2008] ATMO 55, 30 June 2008) on the basis that the mark was not capable of distinguishing Mars' pet food products from the goods or services of other persons (section 41). Following Mars' appeal of the decision to the Federal Court, Nestlé withdrew its opposition to the registration, and Mars also agreed to amend its specification from the wider ‘foodstuffs for domestic pets and additives for such foodstuffs’ to ‘cat food and additives for cat food’. Thus the orders of the Federal Court were made by consent.

Analysis

Notwithstanding that Nestlé withdrew its opposition to the registration and it was therefore unnecessary to consider section 41, Bennett J reviewed the evidence and concluded that Whiskas Purple, at the priority date, was capable of distinguishing Mars' goods from other cat food products and additives for cat food.

Mars contended that the trade mark was capable of distinguishing Mars' goods from those of other manufacturers because the mark is, or is to some extent, inherently adapted to distinguish (sections 41(3) and 41(5)). Alternatively, Mars claimed that the evidence established that the trade mark did in fact distinguish Mars' goods as at the filing date (section 41(6)). The Court accepted the substantial evidence adduced by Mars that it had marketed and used Whiskas Purple as an entirely new colour in Australia across the Whiskas product range both before and after the priority date. The colour was carefully developed to create a stronger brand identity and shelf-blocking in supermarkets, and functioned as a trade mark. The Court also accepted that, while other traders have used very similar shades of purple on pet food packaging, such use has not been trade mark use, and they would be unlikely to desire to use the mark as a trade mark without improper motive. Further, the Court emphasised that the registration would not prevent non-trade mark use of the purple or pink-purple colours by other cat food manufacturers, for example, to indicate a particular product variety.

Whilst the Court did not set out any principles concerning how a colour applied to goods may be inherently adapted to distinguish, the Federal Court of Australia did so in the earlier decision of Philmac Pty Ltd v Registrar of Trade Marks (2002) 126 FCR 525 (13 December 2002). There Mansfield J considered, in light of section 41, whether the registration of a trade mark consisting of the terracotta colour applied to the connecting inserts and split rings in respect of plastic compression fittings for B class/rural imperial sized polyethylene pipe, should have been allowed by a delegate of the Registrar of Trade Marks.

For the purposes of section 41(3), Mansfield J set out the circumstances in which a colour applied to goods will be inherently adapted to distinguish ((2002) 126 FCR 525 at 546):

• the colour does not serve a utilitarian function, in that it does not physically or chemically produce an effect (such as light reflection or heat absorption);
• the colour does not serve an ornamental function, in that it does not convey a recognised meaning (such as to denote heat, danger or environmentalism);
• the colour does not serve an economic function, in that it is not the naturally occurring colour of a product and registration of that colour for that product would not submit competitors to extra expense or extraordinary manufacturing processes to avoid infringement; and
• 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 particular goods, other properly motivated traders might naturally think of the colour use it in a similar manner in respect of their goods.

The Court considered that point (iv) above raises two additional considerations ((2002) 126 FCR 525 at 546-7):

• whether there is a competitive need for the use of colour and
• the likelihood of such traders wishing to apply it to their goods should be considered in the context of both the colour in the application and the goods in respect of which registration of the trade mark is sought.

The Federal Court held that the mark was not inherently adapted to distinguish Philmac's goods from those of other persons under section 41(3), and that the mark applied to the split ring (as opposed to the insert) did not distinguish Philmac's goods from those of other manufacturers under section 41(6). However, the Court declined to neither reject nor accede to Philmac's application. The Court considered that the application may proceed to registration (based on the evidenced use of the mark) if it was confined to the terracotta colour applied to the connecting inserts of plastic compression fittings for B class/rural imperial sized polyethylene pipe. Indeed, Philmac amended the application and subsequently secured registration in Australia.

Practical significance

Increasing trend in the protection of colour marks in Australia?

The decision in Mars reflects an increase in the protection of colour marks in Australia, and is the second case concerning the colour purple in particular that has arisen in Australia. The long-running dispute between Cadbury and Darrell Lea over the use of the colour purple in chocolate packaging led to Cadbury securing trade mark protection of certain shades of purple in respect of chocolate, block chocolate and boxed chocolate.

Further, the decision of the Federal Court in Philmac demonstrates that, in the context of section 41, an application for a colour mark may not succeed where the application is made in respect of a colour generally, as opposed to a particular shade of a colour (eg, ‘purple’ as opposed to specific shades of purple, identified on a colour chart). This is in line with the acceptance of the application in respect of the specific Whiskas Purple colour in Mars and the Cadbury registration.

Use of a colour as a trade mark

The decision in Mars also demonstrates the need to show that a colour is being used as a trade mark (distinguishing the goods from those of competitors, as opposed to merely signifying a particular flavour or variety), and that registration does not prevent non-trade mark use of the particular colour.

As Mars illustrates, the registration of colour marks in Australia will undoubtedly be a contentious issue in the future, particularly if the number of applications for registration of such marks continues to rise.