The Federal Court of Australia has recently handed down a decision in the matter of Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Societe des Produits Nesle SA  FCA 639. This matter has been running around in court for some time now and finally a decision in this matter has been made.
In this case Mars Australia is the owner of Whiskas, a brand of cat food. The company had for some time used a particular shade of purple in their packaging and marketing materials. The colour was called “Whiskas Purple” and it had been developed for that particular use by their team in Europe. After using this colour in their packaging and marketing materials for some time, Mars Australia sought to register that colour as a trade mark.
One of the questions before the court was if the colour that was used distinguished Whiskas from other brands of cat food. The court found that:
- Mars Australia had used the colour extensively in its packaging and marketing materials before and after they had submitted the trade mark application
- The colour was carefully developed and chosen to create a stronger brand identity.
- Other traders have used various shades of purple on similar products; however they have not been using those colours as trade marks. Rather, the use of the colour purple in other products has been to indicate different varieties within a product range.
Mars Australia also submitted evidence of a survey it conducted in May 2009 that found that consumers generally associated the colour, Whiskas purple, to the goods.
Accordingly the court found that the colour, Whiskas purple, did function as a trade mark and was capable of distinguishing Mars Australia’s goods.
Registration of a colour as a trade mark is allowable under the Trade Marks Act 1995. It is a relatively new area that has given rise to numerous disputes over the years. Cadbury had previously applied for protection for its use of its purple colour. Similarly, BP has protection over the colours green and yellow.
While it is exciting to see that non-traditional trade marks are becoming more popular, this case has shown us that it is difficult to gain protection of these types of trade marks. Businesses wanting protection over non-traditional trade marks must not only develop the trade mark also promote and market the trade mark extensively, to the point where it is able to be distinguished from others.