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Trade marking colours – lessons for brand owners
Is colour part of your brand? A recent decision of the Australian Trade Marks Office has highlighted some of the considerations (and difficulties) that apply to registering a colour or colour combinations as a trade mark.
In Discount Drug Stores Pty Ltd  ATMO 66, Discount Drug Stores, a pharmacy chain with over 51 stores throughout Australia, applied to register the following combination of the colours purple and orange (Pantone no 2612 and 1505 respectively) as a trade mark in relation to various pharmacy related services.
In support of its application, Discount Drug Stores submitted evidence showing it had used the combination of purple and orange since 2001 in its marketing materials and store get-up.
The Trade Marks Examiner was not convinced and maintained an objection to the application. Discount Drug Stores requested a hearing on the application.
At the hearing, the Delegate agreed that the colours were not commonly used in the industry and accordingly had some capacity to distinguish the applicant’s services. However, the applicant had to go further and show, through it evidence, that the colours did in fact distinguish the applicant’s services.
Here, the Delegate found some problems with Discount Drug Stores’ evidence. The evidence indicated that Discount Drug Stores was not really using the colours as a ‘badge of origin’. The actual shades of purple and orange used were inconsistent and the colours were subsidiary (a ‘limping trade mark’) to other trade marks used in conjunction with the colours.
The Delegate concluded that consumers would not regard the colour purple and orange, when used apart from the applicant’s other branding, as identifying Discount Drug Stores and the application was refused.
- Colours can be registered as trade marks and undergo largely the same examination process as standard trade marks. So, in order to be registrable a colour cannot be commonly used in the industry relevant to the trade mark (e.g. the colour black for solar collectors or the colour terracotta for pots).
- An applicant must also be able to show that the colour is used and recognised as a ‘badge of origin’ and not merely a decorative or functional aspect of the product.
Photo credit: Asif Akbar
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