HUE AND CRY

Business Day - Business Law and Tax Review - - BUSINESS LAW & TAX REVIEW -

(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

Pic­ture: iSTOCK

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