Fastidious, soigne kittens, to adopt the phrase of Dyson Heydon in one of his naughtier moments, will presumably rejoice.
Mars has been identifying its Whiskas cat food products using a shade of purple that was claimed as having been created "from scratch" (de novo, rather than with a tabby's claws) to brand designer food for cats.
It is used on all varieties of Whiskas cat food as the predominant colour of the packaging. It forms the background to all other material included on the packaging.Mars sought to register that colour as a trade mark under the Trade Marks Act 1995 (Cth) for "Foodstuffs for domestic pets and additives for such foodstuffs", claiming that the mark satisfies the requirements of s 41 of the Act (ie capacity to distinguish). An official in IP Australia, acting as delegate of the Registrar of Trade Marks, considered that 'Whiskas Purple' was not inherently adapted to distinguish Mars' goods.
The Delegate noted that other traders used different shades of purple to identify varieties of cat food. The Delegate accepted that consumers would associate the colour with Mars' product but did not accept that consumers sufficiently recognised the colour to always distinguish Mars's goods from those of competitors and rejected Mars' claim that any relevant usage of Whiskas Purple would suggest an association with Mars. Moreover, the Delegate considered that it would "not remotely be tenable" to say that the proposed mark distinguished goods upon which it had never been used, such as other pet food, particularly dog food.
Nestlé opposed Mars' application to register the colour as a mark.
The current judgment states that -
Mars recognises and accepts that other traders have, before and after the priority date, used a form of purple on pet food packaging. While Mars does not accept that such use includes the use of colours that are very similar to Whiskas Purple, in my view there is evidence of such use. However, Mars emphasises that the use of a purple colour by other traders has not been shown to be trade mark use. It points out that, on the evidence, most use involves the use of purple on specific varieties within a product range to distinguish such varieties. It submits that other traders would not be likely without improper motive to desire to use the mark, or some mark nearly resembling it, upon or in connection with their own goods in any manner that would infringe the Mars mark ... Mars says that registration of Whiskas Purple does not destroy its primary use as a colour for trivial, descriptive or other non - trade mark use. It will not prevent non - trade mark use of the colour purple or a pink-purple by others, for example to indicate a particular variety in a product range.It goes on to note that -
Mars points to the extensive evidence of the marketing of Whiskas Purple and of its use, which have served to establish the trade mark significance of the Whiskas Purple colour in the minds of consumers and the association between that colour and the Whiskas range of products. Further, there had been no previous use by Mars of such a colour. Mars had previously used blue on the packaging of Whiskas products. It adopted an entirely new colour as a trade mark and promoted it heavily from the outset with, as the evidence establishes, the clear intention of giving the colour a trade mark significance. The Act accepts (s 17 and s 6 of the Act) and the evidence establishes that a colour can function as a trade mark. Mars adduced expert evidence which supports its contention that Whiskas Purple functioned in this way at the priority date. As at the date of a survey conducted in May 2009, the evidence supports the submission that Whiskas Purple did function as a trade mark, a badge of origin by which consumers identified Mars’ goods in contrast to the goods of other traders. Mars relies on its use of Whiskas Purple as establishing that the colour in fact distinguished its goods so that it must have been capable of distinguishing them for the purposes of s 41(2) of the Act within the meaning of s 41(5) and, alternatively s 41(6). Mars submits that the Whiskas Purple colour itself has, by the use which has occurred, come to distinguish Mars’ goods.
