Golf tees smelling of eucalyptus, 220 colours ranging anywhere from pink to gold, and a phrase known to us all – “Ah McCain You've Done It Again”. These are only some of the less conventional trade marks currently registered in Australia. The customers may be used to trade marks such as slogans and logos, but the Trade Marks Act also permits non-conventional trade marks, such as colour, scent or sound.

One such trade mark for the colour purple for cat food has been subject to a heated dispute since 2006 ended in the Federal Court last week. Mars Australia sought to register the trade mark in 2002, but it proved to be quite difficult. The Trade Marks Examiner rejected the application a couple of times and, when the application was finally accepted in 2005, it was opposed by Nestlé.

Nestlé contended that the colour purple for cat food was not capable of distinguishing Mars’ goods from those of other traders and could not function as a trade mark. The Trade Marks Office agreed that this colour in this context was not inherently distinctive and, although Mars provided evidence of extensive use of this colour, was also of the opinion that purple had not become distinctive through use. Other pet food manufacturers were using similar shades of purple on their pet food packaging. The Trade Marks Office thought that this fact further militated against Mars’ assertion that the colour purple became distinctive (and should become Mars’ property). Nestlé also won an argument that Mars’ application for this trade mark was accepted on the basis of false representations. In its application Mars asserted that no other cat food manufacturer in Australia used the colour purple or any shade of it. Such representations were thought to be “an artful choice of words” and, although were not made with an intention to deceive, resulted in Mars’ application being accepted. Mars appealed to the Federal Court.

During the court proceedings the parties had settled and Nestlé withdrew its opposition. As a result, Mars’ trade mark for the colour purple for cat food was free to proceed to registration. In her judgement Justice Bennett observed that because Mars had specifically “invented” this particular shade of purple and had used it extensively to create a “shelf-blocking effect when displayed” for its range of Whiskas products, the colour purple acquired distinctiveness through use and was able to function as a trade mark. In relation to false assertions, the Court found that Mars’ application had not been accepted on the basis of such assertions only and other evidence was available to the Trade Marks Office which negated them. Therefore, there was no required causal connection between the false representations and the acceptance of the application.

The eight-year saga of this trade mark illustrates that although colour trade marks are becoming increasingly popular, the threshold for acceptance of non-conventional trade marks remains high. Any person interested in registering a sound, a scent or a colour as a trade mark, should be aware that this process may not be as easy as in case of traditional trade marks and expect that, at least at the very beginning, the Trade Marks Office will be sceptical.

Should you have questions about registering and protecting trade marks, please do not hesitate to contact Adam Simpson. Simpsons Solicitors have extensive expertise in registering, defending, and protecting trade marks, ranging from advising on registrability through to litigating matters in the Federal Court.