Cadbury Limited

Cadbury Limited applied to register the colour purple as a trade mark for chocolate and chocolate confectionery. The application was examined and a ground for rejection was raised under section 41 of the *Trade Marks Act 1995* (Cth) on the basis that the mark lacked inherent adaptation to distinguish the applicant's goods. Cadbury sought to rely on evidence of use to establish distinctiveness and also argued for the application of subsection 41(5) of the Act, which allows for consideration of the combined effect of inherent adaptation and use. The matter proceeded to a hearing before a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the colour purple, as applied to the packaging of chocolate and chocolate confectionery, was inherently adapted to distinguish Cadbury's goods, and if not, whether it had acquired distinctiveness through use. The delegate was required to determine the appropriate section of the *Trade Marks Act 1995* under which to assess the application, considering the arguments presented regarding the nature of colour trade marks and the interplay between non-traditional marks and verbal trade marks. The delegate also had to consider the principles for assessing inherent adaptation, including competitive need and functionality, as well as the specific definitions and connotations of the colour purple.

The delegate reasoned that the test for inherent adaptation to distinguish requires considering whether other traders are likely to desire to use the mark in the ordinary course of their business. Applying this test to purple packaging for confectionery, the delegate considered that confectionery is a discretionary purchase where attractive packaging is a key marketing tool, and that colours can carry associations. The delegate noted that while purple has historical associations with royalty and luxury, it does not inherently perform a function or indicate a characteristic of chocolate confectionery, nor is there a clear competitive need for other traders to use purple packaging for such goods. The delegate also considered the applicant's submissions that a colour mark used in conjunction with a well-known word mark could acquire distinctiveness, and that the colour purple was an unusual and exotic choice for confectionery packaging.

The delegate ultimately found that the colour purple, when applied to the packaging of chocolate and chocolate confectionery, was not inherently adapted to distinguish Cadbury's goods. The delegate determined that the evidence of use submitted by Cadbury was insufficient to establish that the colour purple, on its own, had acquired distinctiveness in the minds of consumers as indicating Cadbury's goods. Consequently, the application for registration of the trade mark was rejected.