Most people think of trade marks as simply words and/or logos. Whilst this may be the practical reality for many organisations and businesses, the scope of the Trade Marks Act 1995 (Cth) in Australia extends beyond this into other dimensions.

These dimensions are the future and the future is here. We continue to move towards greater use of multimedia and digital technology where sounds and colour are of ever-increasing importance in marketing goods and services.

In the battle for these colours and sounds the stakes are high because the system serves those who come first and can reward them perpetually. With limited exceptions no other intellectual property monopoly right can exist forever as simply and easily as trade mark rights can. Just think of what the trade marks register will be like in 10 years, or even 25 years. That's one crowded register!  
 

As a result many businesses and organisations are buying up this virtual real estate, and investing for the future. Obtaining a monopoly on a colour or sound is no mean feat though, and a few high profile cases discussed below serve to demonstrate trade mark law requirements and challenges.

Cadbury v Darrell Lea: The War Over Purple

We have previously written about the ongoing legal battle between confectionary king Cadbury Schweppes and rival chocolatier chain Darrell Lea over use of the colour purple for chocolate. Their battle continues to rage on several fronts in trade mark, passing off and trade practices law.

In the passing off and trade practices action, Cadbury recently tasted success of sorts in the Full Federal Court of Australia, which ruled the trial judge had erred in not admitting some expert evidence from Cadbury.

Also, the trial judge had quite emphatically stated that “Cadbury does not own the colour purple and does not have an exclusive reputation in purple in connection with chocolate”. The Full Federal Court made clear that under the law Cadbury are not necessarily required to establish an exclusive reputation in purple. Rather, the issue was whether Darrell Lea’s use of purple is likely to mislead or deceive consumers into believing that there is some relevant connection between Darrell Lea and Cadbury when there was none.

There are two takeaways from the appeal case decision. Firstly, as law blog IPWar's states “…it is now permissible to lead evidence about marketing theory and practice relating to consumer behaviour”. Second, you do not need an exclusive reputation to demonstrate another party has passed off your products or engaged in deceptive or misleading conduct using a key element of your products.

The Cadbury v Darrell Lea battle is not over, the appeal court sent the case back to the trial judge to continue it.

BP Discovers It Ain’t Easy Being Green

BP and Woolworths are also in a colour battle that has been raging on. Theirs is over use of the colour green for service stations.

Whilst BP was successful in obtaining registration for the colour green before a single judge in the Federal Court in Australia in October 2004, Woolworths successfully appealed the decision to the full Federal Court.

In the appeal decision the court ruled that not only was there evidentiary issues but BP's claims to the use of green were flawed: “Taking all the evidence into account, ... we are unable to conclude that any trade mark use of colour by BP at the relevant times has been other than green as the dominant colour in conjunction with yellow as the subsidiary colour.” [Emphasis ours]

BP next move was to seek to overturn that full Federal Court result. But the High Court last month refused to hear the BP appeal for several reasons outlined here at IPWar’s. Game over.

When claiming reputation in a trade mark, it is critical to carefully verify the consistency of that mark’s use. Too often we represent clients seeking to register a name or brand, yet later discover that the name or brand in question is used inconsistently in practice by our client. For legal reasons it is foolish to register a brand (word, logo, whatever) as a trade mark and then in practice use the brand inconsistenly, eg in various versions.

For legal reasons it is also a very bad idea to take that brand and submerge it in a messy Christmas tree of words, taglines, design frills or other elements. Keep it clean, register what you need and use it consistently.

Because BP always used yellow as a subsidiary colour (as the court stated, an “ever present companion”) when it used green, it followed in the court's view that it could not claim reputation in green alone as required.

To be clear - use your trade mark consistently, register what you actually use, and in the form you use it.

When Sound Applications Fall on Deaf Ears

To "get" this next case, first click the graphic below to hear Nokia's registered sound trade mark. 

Although the opportunity to register sounds was introduced into trade mark law in Australia 1995, according to a search of the trade marks register there are currently only 27 sound trade marks registered in Australia.

The oldest of these is the Dunlop “sproing”, but favourites at the Lightbulb include “Ah McCain (Ping) You've Done It Again”, the Dolmio jingle (being a tune resembling a Sicilian waltz), the Intel sound (“a five tone audio progression”),  the "Happy Little Vegemites" song, Windscreen O’Brien’s barbershop-esque “"O", "O", "O", "O'BRIEN", Boost Juice’s “Boooooooost” and Toyota’s “O What a Feeling” jingle. Even an Aristocrat poker machine melody is registered.

So when is a sound a trade mark? An April 2007 Hong Kong decision provides a perspective on the requirements for registering a sound mark, using a rather well-known tune that looks something like the picture (right).

Although we’ve all heard this Nokia ringtone ad nauseum, you may be surprised to learn that it was initially rejected for registration in Australia, as well as Hong Kong. Among other reasons, in a decision the Hong Kong examiner stated:

"On hearing the subject mark, however, the relevant consumers would only perceive it as a sound that signals that the goods are in operation but no more … the subject mark fails to perform the essential function of a trade mark, which is to guarantee the identity of the origin of the marked products to the consumer by enabling him to distinguish the products from others which have another origin."

In Australia Nokia's sound trade mark was accepted and advertised on 24 May 2007, but only after three rejections from the Trade Marks Office. We assume Nokia was able to introduce sufficient evidence to persuade the Australian Trade Marks Office Examiner that Nokia was entitled to registration of the sound.

From the Hong Kong case it is clear that having a sound that is well known – even, instantly recognisable, like the Nokia ringtone – will not in itself guarantee registration. As noted above, the sound must be shown to identify the specific origin of the products to which the sound trade mark relates. Otherwise, you’re simply sounding off.