Registrability of the word PURPLE
Introduction
Henry Hughes & Co acted for the successful appellant in a recent High Court decision which deals with the registrability of the word PURPLE as a trade mark for a variety of confectionery, snack foods and bakery products.
The decision considers the Du Cros test for distinctiveness (set out in W and G Du Cros Ltd’s Applications (1913) 30 RPC 660 per Lord Parker at pages 671 to 672). That test queries whether other traders are likely, in the course of their business and without any improper motive, to desire to use the same or a similar trade mark upon or in connection with their own goods. This decision confirms that consideration of the goods in relation to which other traders may wish to use the same word (or sign) need not be confined to the exact goods of the application.
The Application and the Decision of the Assistant Commissioner of Trade Marks
Cadbury Limited’s application to register the word PURPLE as a trade mark was accepted for the following goods in class 30:
Chocolate, chocolates, non-medicated confectionery, biscuits, wafers, cakes, snack food, preparations made from cereal; ice cream, ices, frozen confections; none of the foregoing goods being coloured purple.
Effem Foods Limited (trading as MasterFoods Australia New Zealand) opposed the application. At the hearing before the Assistant Commissioner of Trade Marks, MasterFoods objected that PURPLE is not registrable as a trade mark for the above goods because it is not distinctive of or capable of distinguishing Cadbury’s goods. MasterFoods argued that, because purple colours are commonly used for confectionery and bakery goods (as the colour of the goods themselves, or as icings or coatings, or on packaging):
(i) PURPLE cannot function as a trade mark for confectionery and bakery products within the meaning of section 2 of the Trade Marks Act 1953;
(ii) PURPLE is not eligible for registration as a trade mark under section 14 or section 15 of the Act for such goods; and
(iii) the exclusion of purple-coloured goods does not overcome these objections.
The Assistant Commissioner held that PURPLE is a trade mark within the meaning of section 2 of the Act. She also held that PURPLE is eligible for registration because it is not descriptive of goods which are not purple coloured, and is not a word in common use by other traders of the relevant goods. She was not persuaded by MasterFoods that other traders would be unfairly disadvantaged by the registration of PURPLE by Cadbury for the relevant goods, because she did not believe that other traders would wish to use the word (as opposed to the colour) in relation to their goods.
The High Court Decision
MasterFoods appealed to the High Court. Its grounds of appeal, in summary, were that Cadbury is not entitled to register PURPLE as a trade mark for the relevant goods because:
(i) PURPLE cannot function as a trade mark when used on or in relation to those goods, because the word is descriptive of those goods, and otherwise non-distinctive when used in relation to them; and
(ii) the exclusion of purple-coloured goods does not overcome these obstacles. Such a negative restriction should not be permitted, as it leads to uncertainty.
The Issues
The judge considered the requirements of Section 14 of the Act, which provides for registration of a trade mark which is distinctive. Section 14 provides that, in order for a trade mark to be registrable under that section, it must contain or consist of at least one “essential particular”, being (among other things) a word or words that is/are not descriptive when used in relation to the goods of the application (section 14(1)(d)), or “any other distinctive sign” (section 14(1)(e)). The judge found (following Re Fanfold Ltd’s Application (1928) 45 RPC 326 (CA)) that the trade mark proposed to be registered must not only contain an “essential particular”, but must also be distinctive.
Accordingly, the judge stated that, in considering whether PURPLE is registrable under section 14, two questions must be addressed:
(i) Is the word one which has “no direct reference to the character of quality of the goods”?; and
(ii) When used in relation to the goods in respect of which it is to be registered, is that word adapted to distinguish goods of the proprietor from goods of others?
Descriptiveness - Is the mark one which has ‘no direct reference to the character or quality of the goods’?
The judge agreed with the Assistant Commissioner that PURPLE is most likely to be understood by members of the trade and ultimate consumers as meaning “of the colour purple, especially of a deep rich shade between crimson and violet”. The judge said that, if one considers the goods of the application without the final words “none of the foregoing goods being coloured purple”, then PURPLE must be seen as potentially having a direct reference to the possible character of the goods, in that goods of the type described might be coloured purple, or contain elements which are coloured purple, or be packaged in packages containing the colour purple. The judge then noted that it became common ground during the course of the hearing that the exclusion “none of the foregoing goods being coloured purple” extended to both the goods themselves and their packaging. On this basis, the judge was satisfied that the word “purple” has no direct reference to the character or quality of the goods, because purple coloured (and packaged) goods are excluded.
Negative Restriction
Effem Foods referred to the judgment of the European Court of Justice in Postkantoor [2004] ETMR 57, applied in the United Kingdom in Croom’s Trade Mark Application [2005] RPC 2. It submitted that the exclusion of purple coloured goods from the specification should not be permitted because it is a negative restriction relating to a characteristic of goods (as opposed to an exclusion of a category of goods) and its scope is therefore uncertain. The judge declined to decide this point.
Distinctiveness - Is the word adapted, in relation to the goods in respect of which it is to be registered, to distinguish goods of the proprietor from goods of others?
The judge confirmed that the test of distinctiveness is that set out in W and G Du Cros Ltd’s Applications (1913) 30 RPC 660 per Lord Parker at pages 671 to 672. The relevant query is: are other traders likely, in the course of their business and without any improper motive, to desire to use the same or a similar word (or sign) upon or in connection with their own goods?
The judge stated that there is no suggestion in that test that the goods in relation to which other traders may wish to use the word (or sign) must be in all respects identical to, and within the specification for, the goods covered by the application. Accordingly, the judge considered that the Du Cros test does not require that the consideration of distinctiveness in this case be restricted to the consideration of non-purple goods of the type described in the specification.
The judge said that:
“ [16] … The distinction must be able to be made by persons dealing with the goods in trade. Defining the goods which are to be distinguished by reference to a characteristic which does not alter the inherent nature of the goods does not achieve that object. One of the goods covered here is ice cream, for example. A person concerned in trade with ice cream can readily appreciate, without a detailed knowledge of the trade mark register, that a particular mark will distinguish the ice cream of the proprietor from the ice cream of other traders. But that person could not be expected to know, without a detailed knowledge of the register, that what was to be distinguished was not all types of ice cream but only ice cream which was not coloured purple.
[17] Restriction of the consideration of distinctiveness to non-purple goods is not required by the Du Cros test, and would be quite unworkable in this case. A person involved in the trade, seeking to distinguish the goods, would need to know that there was a distinction, on the trade mark register, so that purple ice cream (for example) is to be regarded as a different category of goods from non purple ice cream. If the person concerned had that knowledge, a degree of mental agility would be required, if the word “purple” was encountered in respect of ice cream, to understand that, if that was not purple ice cream, then it must be proprietor’s ice cream, but that, if it was purple, it could be the ice cream of another trader. Furthermore, even if the person concerned had that detailed knowledge of the trade mark specification, and the degree of mental agility involved, the person would be unable to distinguish the goods of the proprietor from the goods of another trader merely by seeing the mark used, without also seeing the goods. If the person encountered the term “purple ice cream” in an advertisement, there would be nothing inherent in that phrase to indicate whether that was the proprietor’s ice cream, with purple being used as a trade mark, or another trader’s ice cream, with purple being used as a descriptive word. The person concerned could make that distinction only by seeing the product itself, or a coloured photograph or drawing of the product, so as to see whether the product was in fact purple or not. And even that may be insufficient. If the ice cream in a container which was not coloured purple, it would be necessary to open the container to see whether the contents were purple or not before the distinction could be made.”
The judge also disagreed with the Assistant Commissioner on the evidence required as to use of the word “purple” by other traders. The Assistant Commissioner held that the Du Cros test was not met by the appellant because it provided only a few examples of use of the word “purple” by other traders in relation to confectionery products. The judge found that, even if there was no evidence, the test is whether other traders are likely to wish to use the word; actual use may be relevant to likelihood, but is not the test. The judge found that likelihood was sufficiently established in this case by the evidence (produced by MasterFoods) that purple packaging is sometimes used for bakery and confectionery goods, and the use of the word “purple” in describing such packaging would be legitimate.
Conclusion
The judge accordingly held that the word PURPLE does not have the degree of distinctiveness necessary for registration under section 14, and does not meet the lesser test of “capable of distinguishing” in section 15.
The appeal was allowed. An appeal to the Court of Appeal has been filed by Cadbury.
This case was decided under the Trade Marks Act 1953. That Act has been superseded by the Trade Marks Act 2002. The general principles established by this case would still apply under the 2002 Act, where:
(i) the definition of “trade mark” in section 5 requires that a sign must be (among other things) capable of distinguishing the goods or services of one person from those of another person; and
(ii) the Commissioner must not register “a sign that is not a trade mark” (section 18(1)(a)), or “a trade mark that has no distinctive character” (section 18(1)(b)).
Barbara Sullivan - January 2006
