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Well, well, well – haven’t we all been painting the town purple this last couple of weeks! We’ve had the decisions of Justice Heerey on evidence in passing off/s 52 a little while ago, then last week his Honour’s final decision holding that Darrell Lea had not passed off its goods as Cadburys, nor confused nor misled consumers through use of the colour purple.

Now, IP Australia have put online their decision (watch it – 59 page pdf) in Darrell Lea’s opposition to Cadbury’s application to register a trade mark for the colour purple for chocolate. And while Darrell Lea have succeeded in opposing the registration, IP Australia have ruled that Cadbury can get a narrower registration for their colour purple for block chocolate and boxed chocolates.

The application was for:

‘The trade mark is the colour PURPLE depicted in the representations attached to the application form used as the substantial colour of packaging in relation to the nominated goods.[the ‘nominated goods’ are class 30: chocolate].’

When Justice Heerey handed down his decision, he made some pretty specific findings regarding colour, and Cadbury’s reputation in the colour purple. He found that:

1. Cadbury does not have an exclusive reputation in the use of this dark purple colour in connection with chocolate. Other traders have, with Cadbury’s knowledge, for many years used a similar shade of purple. Cadbury has not consistently enforced its alleged exclusive reputation. In relation to its chief competitor Nestlé, Cadbury has, for its own commercial reasons, permitted a use of purple in relation to popular chocolate products; and
2. Cadbury’s use of purple in marketing advertising and promotion is, and is seen by consumers to be, inextricably bound up with the well known name Cadbury in its distinctive script. Cadbury never uses the colour purple in isolation as an indicium of trade.

At the time, I wondered out loud what this meant for the opposition: if a judge is specifically finding the colour not distinctive of Cadbury, could a registration go ahead?

Now we know. The result? The opposition succeeded. The application could not proceed as drafted. HOWEVER, this ruling was qualified – Cadbury had succeeded in showing the colour was distinctive for moulded block chocolate:

‘The evidence has established to my satisfaction that the applicant’s use of the colour purple as a trade mark (which, by the terms of the application, is the substantial colour of packaging in relation to the nominated goods), was in fact capable of distinguishing at the filing date, in respect of moulded block milk chocolate and boxed milk chocolate bonbons. The use, and acquired distinctiveness, was such that it clearly should not have been taken to be capable of distinguishing in respect of ‘chocolate’ in general. It is not appropriate therefore that the application be registered in respect of ‘chocolate’ in Class 30, which is how the application now stands. The opponent has also established to my satisfaction that the application was wrongly amended in terms of section 62 of the Act and the application should not be registered in respect of any colour other than one which approximates to Pantone® PMS 2685c.’

Now, as Heerey found in the passing off case, Darrell Lea does not sell moulded block chocolate: so this decision may suit them just fine. And, of course, Justice Heerey did not have to consider distinctiveness in a narrower sense than ‘chocolate’ generally. But it is interesting, and it does mean that we can’t say, in sweeping tones, ‘Cadbury does not own purple’. It owns a little bit of purple for a few limited goods. Not bad. It’s a nice colour.

Update: just had a more detailed read of the decision, and I’m kind of thinking that Darrell Lea really wouldn’t be thrilled with this particular decision. That is because of the way the amendments proposed by the TMO work.

The TMO has decided that Cadbury can go ahead if it amends it’s application to cover its purple only for boxed and block chocolate. Now, while Heerey J said that Darrell Lea don’t sell block chocolate – they do sell boxed chocolates, right? So a registration like that will constrain future conduct by them (or at least might, depending on the views the courts take regarding what counts as infringement – which we don’t know yet). Remember too that infringement can occur where a mark (or something close) is used on similar goods – and just about any form of chocolate would be similar goods, right?

In other words, even if Cadburys end up with a slightly shorter sword, they can still swing it around wildly, can’t they…