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Battle Royal over the Colour Purple

24 October 2008

In 1998 Cadbury applied to register purple packaging as a trade mark. Registration would give the chocolate manufacturer the exclusive right to use purple packaging on chocolate and it could take infringement action against other traders using purple in the same or similar fashion. For its application to be accepted by IP Australia, Cadbury had to show that consumers recognised chocolate in purple packaging as being a Cadbury product. This took some time and it was not until 2003 that the application was accepted. Other traders were then given the opportunity to object to it being registered.

Darrell Lea, another well known confectionery manufacturer, did oppose registration. After hearing both parties on the matter and reviewing their evidence, a delegate of the Registrar of Trade Marks decided in 2006 that Cadbury could register a specific shade of purple as a trade mark when used on the packaging for 'block chocolate and boxed chocolate'. The delegate's decision is on the IP Australia website.

Both Cadbury and Darrell Lea appealed the decision at the Federal Court. Such an appeal is not an appeal in the true sense. The Federal Court considers the matter afresh. Both parties can introduce evidence that was not considered by IP Australia. At the time of writing, the evidence stage of the court proceedings (VID 546 of 2007) has ended but a trial date is yet to be scheduled.

In the meantime Cadbury, obviously concerned about Darrell Lea's use of the colour purple, commenced proceedings in the Federal Court (VID 555 of 2005). It alleged passing off on the part of Darrell Lea as well as false, misleading or deceptive conduct contrary to the Trade Practices Act 1974. In support of its case Cadbury wanted to rely on expert opinion however the judge ruled that evidence inadmissible. In his 2006 judgment he said 'Cadbury does not own the colour purple and does not have an exclusive reputation in purple in connection with chocolate.' He found there had been no passing off or misleading or deceptive conduct on the part of Darrell Lea. Cadbury appealed to the Full Federal Court. The latter ruled the expert evidence should not have been excluded and directed the judge to hear both parties on the evidence. Following that hearing in March 2008 the judge found against Cadbury as follows:

Having considered the evidence of the Cadbury experts, and reconsidered the evidence at the earlier hearing, I am not persuaded that Darrell Lea, in using the colour purple, has passed off its business or products as those of Cadbury or contravened the Trade Practices Act. I am not satisfied that such usage has resulted, or would result, in a hypothetical ordinary and reasonable member of the class constituted by prospective purchasers of chocolate being misled or deceived, contrary to ss 52 or 53(c) and (d).

Cadbury was granted leave to appeal the judgment (VID 284 of 2008). The appeal is to be heard in two parts. The first part will be in relation to the appeal ground of apprehended bias on the part of the judge. The hearing is scheduled for 14 November 2008.

Cadbury has applied to register other shades of purple as trade marks for 'block chocolate; boxed chocolate'. Three of these applications have been accepted by IP Australia for possible registration and opposed by Darrell Lea. In late 2007 Darrell Lea asked IP Australia to suspend these oppositions pending the court's decisions in the trade mark registration matter and the passing off matter. The Registrar's delegate considered how relevant the respective court proceedings were to the oppositions, the balance of convenience between the parties, administrative convenience and the public interest. She found it was appropriate to suspend the oppositions until a decision was made in the passing off proceedings. Her decision of 15 January 2008 is on the IP Australia website.

That decision was the subject of judicial review under the Administrative Decisions (Judicial Review) Act 1977. The judge found it may be appropriate for the Registrar to adjourn an opposition because of a relevant court proceeding but not for an indefinite period as was done in this case. He ordered that the oppositions be resumed. They are still at the evidence stage. Darrell Lea has until 1 November 2008 by which to serve its evidence in support of their view that registration for the other shades of purple be refused.