Cadbury fails in quest to obtain trade mark registration for the word PURPLE

In this article, senior associate Colleen Cavanagh discusses a recent decision from the Court of Appeal which underscores the difficulty in obtaining registered trade mark protection for words describing colours.

The Court of Appeal has decided that registration of the word PURPLE cannot be allowed as it would afford Cadbury¹ (the applicant for registration) a de facto monopoly on use of the word PURPLE and provide a disincentive to other traders using that word, even in a descriptive sense, on purple goods - something not within the scheme of the trade mark regime.

Background

Cadbury, which holds registrations of the colour purple, sought to register the word PURPLE as a trade mark in class 30 for "chocolate, chocolates, non medicated confectionery, biscuits, wafers, cakes, snack food, preparations made from cereal; ice cream, ices, frozen confection; none of the foregoing goods being coloured purple."

Effem Foods Limited opposed registration of the trade mark on the basis that PURPLE is not a trade mark that is eligible for registration. In September 2004, the Assistant Commissioner of Trade Marks held that the word PURPLE was eligible for registration. This decision was appealed by Effem Foods and overturned in the High Court by Justice McKenzie in 2005. Cadbury appealed that decision.

This case was being considered under the provisions of the old 1953 Trade Marks Act rather than the current 2002 Act.

Under the 1953 Act the five characteristics that a trade mark must possess at least one of in order to be registrable, were set forth in section 14. The two which are relevant to this case are:

d   A word or words having no direct reference to the character or quality of the goods...

e   Any other distinctive sign...

On appeal, one of the issues considered was whether or not the word PURPLE has direct reference to the character and quality of the goods and if not, whether there was a separate requirement of distinctiveness.

The decision

The Court of Appeal held that Cadbury's argument that the word PURPLE has no direct reference to the character and quality of the goods for which registration was sought could not be upheld. The Appeal Court was of the view that due to people's perception of the purple colour, the question might well be asked whether the word PURPLE is apt to describe lilac, lavender, mauve or violet goods. The court also considered that there is an issue of how much purple there has to be in the goods, or on the packaging, before goods can be described as being purple and come within the exclusion included in the list of goods.

Accordingly, the court did not consider that the word PURPLE met the registrability criteria. It could not be said to be a word having no direct reference to the character or quality of the goods. Although this point was determinative of the appeal, the court went on to consider other issues raised in the appeal.

A second issue was whether or not a finding that a trade mark does not have direct reference to the character or quality of the goods or services in a trade mark application will necessarily mean that it is distinctive. The Court of Appeal considered that whilst the question of the lack of direct reference to the character or quality of the goods will be relevant to the distinctiveness enquiry, it is a separate enquiry and one that must be made.

On the issue as to whether the word PURPLE met the distinctiveness criterion, the Court of Appeal was of the view that the word PURPLE is in most cases inherently descriptive and connotes the colour purple. It considered that goods in the same market as the goods for which registration was sought by Cadbury are commonly coloured purple and that traders would be inhibited in using the word PURPLE in relation to those goods. The Court of Appeal was unable to divorce the word PURPLE from the colour purple. It held that the extent to which purple goods might be held to be similar to non purple goods was uncertain. It was possible that use of the word PURPLE, even on purple goods, might constitute infringement. The court considered that registration of the word PURPLE as being distinctive of the goods for which registration was sought would be granting a monopoly over what is essentially a feature of the goods in the relevant class - something which it could not allow.

A final point, which was considered by the court and which is of practical significance, is the issue of whether a registration excluding goods of a particular type should be allowable. In this case the list of goods for which Cadbury sought registration excluded goods coloured purple. It was submitted by Effem Foods that a negative restriction relating to a characteristic of goods, as opposed to an exclusion of certain categories of goods, should not be allowed. They relied on a decision of the European Court of Justice which has been applied in the United Kingdom pointing out that the definition of trade mark in Europe and in the United Kingdom is very similar to the New Zealand definition.

Cadbury submitted that the Commissioner of Trade Marks has a very broad and unfettered discretion to accept applications subject to conditions or limitations and that this should not be read down by excluding limitations of the type in issue in this case.

The Court of Appeal accepted Effem's submission that the European and UK decisions could be applied in New Zealand to the extent that they stand for the proposition that an exclusion based on the particular characteristics of goods or services covered by any registration, as against the types of goods or services, will in most cases be too uncertain as to scope to be allowable. The court considered that the exclusion of purple goods was too vague to be a meaningful exclusion.

Practical implication

The upshot of this decision is that it will be very difficult for any trade mark owner to obtain registration of a word which describes a colour, even if goods of that colour are specifically excluded from the list of goods for which registration is sought. This will be particularly so if the class of goods for which registration is sought does include some goods of the colour described by the word for which registration is sought.

¹ Cadbury Limited v Effem Foods Limited [2007] NZCA 303

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