Colour word marks: Trade mark registration in Australia

Take home message

Registration prospects are greater if:

• the colour word mark is not descriptive of the goods;
• the colour word mark is not commonly used by other traders in respect of those goods/services, nor is there likely to be such a need;
• the colour word is obscure, as opposed to a primary or secondary colour and/or has an additional meaning to that of a colour;
• the goods are obscure; and
• if evidence is needed, it must show use of the colour as a trade mark.

IP Australia’s approach

An early case allowed registration of PINK BATTS and PINK for pink coloured insulation batts on two grounds, that pink was not a normal colour for batts, which in their natural state were grey or off-white and typically coloured yellow in the industry, and that PINK BATTS and PINK had become distinctive in the marketplace for the applicant’s goods.

There has been a change in approach by IP Australia which is more restrictive, particularly regarding granting rights for primary and secondary colour word marks such as the words red, blue, yellow, green, orange and purple.

Tests that have been applied

The Nature of the Goods - Colour word marks are registrable if the colour could not be descriptive of the actual goods claimed, as in the following registrations:

• Registration of BLUE for computer software
• Registration of INDIGO for otology medical products
• Registration of VIOLET for fuel cells

Evidence of use is required – if the goods could be of that colour and therefore the mark has low or no inherent adaptation to distinguish as in the following registration:

• Registration of RED for electronic input/output modules for digital camera data transmission; camera lenses; electronic data storage devices; batteries; digital image sensors and related electronics

Recent decisions

Insight can be obtained from the following decisions of IP Australia or the courts which provide an indication of how any new application for a colour word mark is likely to be treated, and provide a guideline as to the matters which need to be addressed to improve the prospects for registration.

Red (the Stylised Red Logo case) - Registered with evidence

U.B. Natural Pty Ltd v Red Bull GmbH ATMO 106 (29 Oct 2010)

The Hearing Officer at IP Australia determined:

• Trade marks that are not to any extent inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of goods or services, or the time of production or of rendering the service;
• In considering whether the mark Stylised Red Logo is inherently adapted, the traditional test may be reformulated so as to pose as a central question whether other traders are likely, in the ordinary course of their business and without improper motive, to desire to use the Stylised Red Logo as a mark in respect of the claimed goods;
• Since has a relatively low level of inherent adaptation to distinguish compared to many other marks, it will require a correspondingly higher level of use and other circumstances to satisfy that it does or will distinguish;
• The evidence of use must be for the trade mark that is the subject of the trade mark application;
• The results of the various surveys demonstrated some kind of association in the minds of those people surveyed between the applicant and the word RED.

Trade mark application RED (the RED mark) - Registration refused

Major League Baseball Properties v The National Magazine Company Limited ATMO 35 (4 May 2015)

This was an opposition decision of IP Australia for the colour word mark RED for magazines, in addition to services. The ground of opposition was that the colour word mark RED was not capable of distinguishing the Class 16 goods from the goods of other persons. The reasoning of the Hearing Officer was as follows:

• The test to be applied in assessing whether the trade mark RED has any inherent adaptation to distinguish is that set out in the Blount decision (Blount Inc v Registrar of Trade Marks [1998] 83 FCA 50). The Hearing Office determined the word RED simpliciter is devoid of any adaptation to distinguish for magazines;
• He also stated that where the mark is for a word denoting the colour, it is difficult to draw a distinction between the colour word mark and the colour itself;
• He determined that the colour word mark RED had little or no inherent adaptation to distinguish for magazines, and therefore the onus was on the applicant “to demonstrate significant use of the mark” and “that use must be of the mark as applied for…it is use of RED solus which may be significant, not use of the word “red” (or “Red”) as (part of) a more complex mark.

Trade mark 963492 YELLOW (the YELLOW appeal) - Registration refused

Telstra Corporation v Phone Directories Company Pty Ltd FCAFC 156 (4 November 2015)

This is a decision of the Full Federal Court of Australia on the question of registrability of an application for the word YELLOW in plain block print, for publications being printed telephone and business directories, in addition to related services. The application was accepted by IP Australia on the basis that the mark was, to some extent, adapted to distinguish, and this, combined with evidence of use, was sufficient to demonstrate capacity to distinguish.

This Registrar’s decision was overturned by a decision of a single judge of the Federal Court, and the matter proceeded to the Full Federal Court for decision.

The evidence before IP Australia and the courts was that there had been significant use and promotion of the colour yellow and trade marks incorporating the word YELLOW, in the form YELLOW PAGES, and Yellow Pages and Fingers logo, and HELLO YELLOW prior to the filing date of the colour word mark YELLOW. After the filing of the application there was also use of FIND IT IN YELLOW and HOME AT YELLOW for a website, YELLOW MOBILE for an app and YELLOW IN THE CAR for a glovebox sized directory and other uses for short term campaigns.

The conclusions of the Full Federal Court, upholding the findings of the single judge of the Federal Court, are summarised below:

• “…the present application is for a word denoting a colour rather than the colour itself. But in my view, it is difficult to draw a distinction between a word denoting a colour and a colour when dealing with the issue of a trade mark’s inherent capacity to distinguish”;

• “The classic formulation of the different categories of distinctiveness in relation to marks …are (1) generic, (2) descriptive (3) suggestive and (4) arbitrary or fanciful. Generic terms can never be trade marks. Descriptive terms can, but only if they have acquired a secondary meaning…”;

• The colour word mark YELLOW was held to have no inherent adaptation to distinguish because the word yellow is descriptive of the colour widely used in respect of directories and signified directories to consumers as consumers recognise directories by reference to that colour;

• Other traders were likely, without improper motive, to want to use the word and colour yellow to signify their directories in a way that would infringe a registration for colour word mark YELLOW;

• Having concluded that the word and the colour yellow were descriptive, the colour word mark YELLOW was held to have no inherent adaptation to distinguish.