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colours
This page considers colours as trademarks.
It covers -
introduction
As noted in the preceding page of this profile, brand
owners have increasingly sought to register sounds, smells
and colours as trademarks.
The essential challenge is the task of proving that the
particular colour is unique and is closely associated
with the brand.
It is important to note that a particular colour mark
does not cover all possible uses. A trademark might thus
be issued for use of a specific colour (eg identified
on the Pantone scale) in relation to a particular product
- protected under a discrete trademark class - rather
than for every use of that colour. People in the US are
accordingly free to decorate their nails (or poodles)
and birthday cakes using a particular shade of pink without
infringing the 'pink batts' colour mark.
colours
Australian and overseas entities have sought to trademark
colours, including purple for chocolate and orange for
champagne.
The US Supreme Court held
in Qualitex Co. v Jacobson Products (1995) that
colour per se was registrable as a federal trademark.
In the US fibreglass group Owens-Corning was initially
unsuccessful in seeking to trademark the colour pink in
association with its pink insulation batts. It had spent
heavily on promotion (including licensing of the Pink
Panther cartoon character) and was able to demonstrate
that consumers associated the colour with its product.
Owens-Corning appealed rejection of decision and was eventually
successful in registering the colour in relation to the
particular product.
That has led some commentators to editorialise about 'color
wars' and fret that allowing "appropriation of a
single color" through a trade mark would result in
"exhaustion" of "all of the attractive
colors" in every trade mark class.
In action since the Qualitex case the Court of
Justice of the European Communities noted that although
there may be some media on which it is possible to record
a colour in permanent form, there are others (such as
paper) where the shade of the color cannot be protected
from the effects of time.
disputes
Some idea of challenges is provided by the following overseas
disputes, pre- and post- the Qualitex case -
Ambrit v. Kraft
805 F.2d 974, 993 (11th Cir. 1986)
US frozen dessert manufacturer Ambrit badged its products
in 'royal blue'. Kraft Foods, a multinational competing
in the same sector, adopted the same colour in their packaging
its desserts. Ambrit sued to prevent Kraft from using
blue.
US courts rejected Ambrit's claims as overambitious, indicating
that use of royal blue in packaging frozen desserts was
"functional" and thus could not be monopolised
as a trade mark. The appellate court commented that
Royal blue is a 'cool color;' it is suggestive of coldness
and used by a multitude of ice cream and frozen dessert
producers.
Campbell Soup v Armour
175 F.2d 795 (3d Cir.), cert. denied, 338 U.S. 847 (1949)
Campbell, whose signature red & white label was later
appropriated by pop artist Andy Warhol, claimed that use
of red & white in food packaging by competitor Armour
represented trade mark infringement.
Consistent with the Ambrit case, a US court was unimpressed,
with commenting
If
they may thus monopolize red in all of its shades, the
next manufacturer may monopolize orange in all of its
shades and the next yellow in the same way
The
Third Circuit noted that the 'Campbell red' was a different
shade to that of the Armour 'Carnation red', with the
competitors typically using the colours in different patterns
that would minimise confusion among ordinary consumers.
It commented that "a man cannot acquire a trademark
by color alone"; Campbell thus should not enjoy a
monopoly of a "functional color".
Australia
In Australia attention has focused on the 2006
Federal Court decision in Cadbury Schweppes Pty Ltd
v Darrell Lea Chocolate Shops Pty Ltd (No 4), a dispute
between chocolate makers about use of the colour purple.
Justice Heerey commented (consistent with the decision
in Campomar v Sociedad Limitadav Nike International)
that
Cadbury
does not own the colour purple and does not have an
exclusive reputation in purple in connection with chocolate
in Australia. 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.
He
noted that Cadbury never uses the colour purple in isolation
as an indicium of trade; its products always bear the
Cadbury name in a distinctive script and its use of purple
is seen by consumers as inextricably bound up with the
Cadbury name in its distinctive script.
In contrast the 2003 decision by Mansfield J in the Federal
Court held that Philmac, a maker of water industry equipment,
could register terracotta as a colour mark for non-metallic
rigid irrigation pipe fittings because it was capable
of distinguishing the company's products. Philmac had
appealed to the court after the Registrar of Trade Marks
rejected the application.
Mansfield laid down four conditions under which a colour
mark can be inherently distinctive -
- the
mark cannot be descriptive (ie cannot evoke a state
or condition)
-
the colour cannot be functional
- the
colour cannot be the result of the normal manufacturing
process
- the
colour cannot be used in an industry where colour is
an important element of competition within the industry
studies
Colour marks have attracted increasing academic attention
during the past decade. Points of entry to the literature
include -
-
Jonathan Baker's 1996 'Correcting A Chromatic Aberration:
Qualitex Co v Jacobson Products Co' in 9 Harvard
Journal of Law & Technology 2
- Susan
Douglass' 1995 'Color Me Happy: The Supreme Court Rules
on the Trademark Registrability of Color' in 7 Journal
of Proprietary Rights 5
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