Written by Maggie Lau in September, 2011

Over a year ago, the Federal Court of Australia handed down a decision in favour of Mars Australia Pty Ltd (“Mars”) in regard to their application to register a single colour as the business’ trademark.

In November 2002, Mars, the owner of a cat food brand “Whiskas”, applied to register a colour it developed, referred to as the “Whiskas Purple”, as a trademark for its cat food packaging. The application was accepted for registration. However, Societe de Produits Nestlé SA (“Nestlé”) opposed Mars’ application and a delegate of the Registrar of Trade Marks agreed with the opposition. Mars subsequently appealed the decision of the delegate of Registrar of Trade Marks to the Federal Court of Australia. Mars was successful after Nestlé dropped its opposition in the Appeal in the Federal Court.

Although Nestlé dropped its opposition, Bennett J examined the evidence submitted to consider whether the Whiskas Purple was capable of distinguishing Mars’ goods from others. Based on the evidence, Bennett J was satisfied that the Whiskas Purple was, as at the application date, capable of distinguishing Mars’ goods. Extracts from Bennett J’s reasons for judgement are as follows. Brand owners should consider the following factors if they wish to build recognition to their use of a single colour to distinguish their goods from others and ultimately to register that colour as a trademark under the Trade Practices Act 1995:-

• The Whiskas Purple was created for the Mars group in Europe “from scratch” and was a colour carefully chosen and specifically developed in order for Whiskas to create a stronger brand identity. It is the predominant colour used on the product packaging for all varieties of Whiskas cat food.
• Mars commenced using the Whiskas Purple colour in Australia in April 2000 as a trade mark. That colour and its association with Whiskas was promoted and advertised heavily from the outset with…the clear intention of giving the colour a trademark significance.
• Mars submitted extensive evidence of the marketing of Whiskas Purple and of its use, which have served to establish the trade mark significance of the Whiskas Purple colour in the minds of consumers and the association between that colour and the Whiskas range of products.
• According to a survey conducted in May 2009, Whiskas Purple did function as a trade mark, a badge of origin by which consumers identified Mars’ goods in contrast to the goods of other traders.
• Although other traders have, before and after the date of the trademark application, used a form of purple on pet food packaging, it appears that it had not been trade mark use, but to distinguish specific varieties within a product range. (Mars noted that registration of Whiskas Purple will not prevent non-trade mark use of the colour purple or a pink-purple by others, for example to indicate a particular variety in a product range.)

It is generally considered difficult to obtain registration for a trademark for a single colour. For example, Cadbury Schweppes Pty Ltd’s relentless attempts to gain protection over the use of certain shades of purple for its chocolate products have been unsuccessful. The key issue is for the applicant to be able to prove that consumers are able to associate that colour with the business’ goods and that the colour is able to distinguish the business’ goods from others. This would require the applicant to invest considerable time and money to promote and market the trademark extensively. Mars in this case was able to prove originality, unremitting marketing efforts, and recognition by consumers for its use of Whiskas Purple.

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PLEASE NOTE: All information contained in the articles below was correct at time of publishing.