New Zealand Court of Appeal refuses application to register PURPLE (word) for class 30 goods

In this significant decision, the New Zealand Court of Appeal has i) confirmed that there is a separate requirement for distinctiveness - even though a trade mark may not be descriptive of the specified goods; ii) clarified the scope of the test for determining distinctiveness; and iii) held that a negative restriction relating to a characteristic of goods (as opposed to a category of goods) will usually be too uncertain to be allowable. (Cadbury Limited v Effem Foods Limited (CA274/05 [2007] NZCA 303.)

Cadbury applied to register the word PURPLE for a wide variety of confectionery and bakery goods, with the qualification “none of the foregoing goods being purple coloured”. The word had not been used as a trade mark prior to the application date. Thus registrability was dependent on PURPLE possessing a degree of inherent distinctiveness, so as to be “inherently adapted to distinguish” and “inherently capable of distinguishing” Cadbury’s goods from those of other traders.

The application was opposed by Effem, a company in the Mars Group. To support its opposition Effem provided evidence of use of purple colours for goods and packaging for the types of products included in Cadbury’s specification. The Commissioner of Trade Marks rejected Effem’s opposition.

Effem appealed to the High Court. McKenzie J held that the test of distinctiveness set out in W & G du Cros Ltd’s Applications (1913) 30 RPC 660 did not require that possible legitimate use by other traders of PURPLE in relation to non-purple goods only should be considered – “and would be quite unworkable in this case”. The Judge gave the example of use of the term “purple ice cream” in an advertisement:

“[17]… 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 Judge assumed that PURPLE was not descriptive of Cadbury’s goods, but held that the word was not inherently adapted to distinguish, and not capable of distinguishing Cadbury’s goods. (Cadbury accepted that the exclusion of purple-coloured goods included goods in purple packaging.)

The Court of Appeal rejected Cadbury’s appeal from that decision. The Court found that PURPLE did have a direct reference to the character or quality of goods in the specification, because people’s perceptions of colour differ (is “purple” apt to describe shades such as lilac, lavender, mauve or violet?) and because it was not clear how much purple needed to be on goods before they can be described “purple”.

The Court agreed with McKenzie J that there is a separate requirement of distinctiveness – even if the trade mark is not descriptive of the specified goods or services – because defining goods which are to be distinguishable by reference to a characteristic which does not alter their inherent nature does not achieve distinctiveness.

The Court approved a proposed policy guideline by the Intellectual Property Office of New Zealand, which would refuse to allow qualifications to specifications by excluding goods or services according to whether or not they possess a particular characteristic. In doing so, the Court followed the POSTKANTOOR (C-363/99) [2004] ETMR 57 decision and that in Croom’s Trade Mark Application [2005] RPC 2:

“[40]… to the extent that they stand for the proposition that an exclusion based on the particular characteristics of goods or services covered by any registration, as against the types of goods or services, will, in most cases, be too uncertain as to scope to be allowable.”.

Henry Hughes represented Effem Foods Limited in this matter.

Post Script

The decision has not been appealed.

Following the decision of the Court of Appeal, the Intellectual Property Office of New Zealand proposes to amend its Practice Guidelines by prohibiting exclusions in specifications that state that the goods or services do not possess certain characteristics. Previously such exclusions were sometimes permitted, as a means of overcoming descriptiveness objections to trade mark applications. Exclusions of this nature lead to legal uncertainty over the protection afforded by a mark.

Should the proposed amendment become practice, the Office will not allow “the registration of a mark on the condition that the goods and services applied for do not possess a particular characteristic or nature if it could still lead to confusion or deception as to the characteristics of the goods or services.” Thus an application to register BRAZIL for “chocolates, excluding chocolate containing brazil nuts and chocolate made in Brazil” would not be allowed.

Barbara Sullivan - updated September 2007