HUE AND CRY
(and not merely as decoration) by more than 70% of those surveyed.
There was the famous UK Cadbury case in which an application to register the colour purple (Pantone code 2685C) for chocolate failed because the description referred to the fact that the colour formed the “predominant colour” of the packaging, which the court felt was not sufficiently precise.
The court said the trademark lacked “the required clarity, precision, self-containment, durability and objectivity to qualify for registration”. It felt that the wording of the Cadbury trademark in fact covered multiple trademarks because of the implied reference to other colours.
It said this: “To allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. It would also offend against the principle of fairness by giving a com- petitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage.”
And BP failed to get green (Pantone code 348C) registered in Australia because it failed to prove acquired distinctiveness.
So, what about SA? It may be possible to enforce rights to colour through the law of passing-off, and even by using the passing-off style clauses of the Advertising Standards Authority (ASA). Although the ASA generally doesn’t show much appetite for colour claims, in a recent decision involving two big beer brands it accepted that the one had rights to a combination of silver and green.
As for trademark registration, the definition of the word “mark” in the South African Trade Marks Act makes specific reference to colour. Many years back, Cadbury failed in an application to register purple, but this matter never went beyond the reg- istry and the application was seemingly dismissed because there was insufficient proof that the colour had become distinctive of one company’s chocolate products. As far as I know, there has not been a high court decision on colour trademarks in SA.
The important thing is to be as precise a possible — a Pantone code, consistency between the drawing or representation and the wording, and absolutely no imprecise words like “predominant” or “significant”. It’s worth bearing in mind that there is a great deal at stake with colour trademark registrations and the authorities are rightfully circumspect. As the UK Court of Appeal put it in the Cadbury case: “As the registration of a trademark creates a form of intellectual property conferring a potentially perpetual monopoly in the mark and excluding everybody else from use in various ways, the point of principle has some public importance.”
It’s worth bearing in mind that there is a great deal at stake with colour trademark registrations and the authorities are rightfully circumspect