The “wouldn’t it be nice if the world was Cadbury?” jingle may have to be put to rest following the recent Federal Court hearing of Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 4) [2006] FCA 446 (27 April).

Multi-national chocolate giant, Cadbury Schweppes Pty Ltd (Cadbury), lost a long-running battle for exclusive rights over the colour purple when Justice Heerey vetoed its attempt to sue Australian-based confectioner, Darrell Lea Chocolates Pty Ltd (Darrell Lea), for using similar colours.

Between 2000 and 2004, Darrell Lea used the colour purple in its signage, staff uniforms and various product packaging, which has since been changed to blue. Cadbury alleged that such action by Darrell Lea contravened sections 52 and 53 of the Trade Practices Act 1974 (Cth) (TPA), misleading and deceiving consumers into buying Darrell Lea chocolate and passing off its goods as Cadbury products.

In order to make its claim, Cadbury needed to show that the purple colour is used as a brand identifier for the company’s chocolate products, thereby serving to distinguish Cadbury from its competitors.

Cadbury dominates the world chocolate market and has used purple packaging for its products since the 1920s. In 2002 the company made an unsuccessful application to the Trade Marks Office (TMO) to register the colour purple as a trade mark of its chocolates and chocolate confectionery. In 1995 the Trade Marks Act (Cth) had broadened the definition of trade mark to include non-traditional forms such as shapes, colours, sounds, scents and certain aspects of packaging.

Despite Cadbury’s intensive marketing efforts, a majority (56 per cent) of total sales for its products comprises goods which do not prominently feature the colour purple or use it to drive promotion. As a result, Cadbury was not able to show that its use of purple clearly distinguished its products.

Proving Darrell Lea had breached the TPA was also a challenge for Cadbury. Section 53 of the TPA prohibits a company from presenting itself or its goods as having a sponsorship or association which it does not actually have. In the Federal Court case, Cadbury pleaded that Darrell Lea’s use of purple colouring in the marketing of its products suggested some form of consensual affiliation with Cadbury.

This claim was rejected by Justice Heerey, who in his judgement concluded: “Cadbury and Darrell Lea are competitors in the retail chocolate market, yet they each have distinctive product lines which are sold from different sorts of premises under distinctive trade names. They have distinct identities in the market place. Cadbury does not own the colour purple and does not have an exclusive reputation in purple in connection with chocolate.” (para 121)

Justice Heerey dismissed the case and adjourned the question of costs to be heard at a later date. In light of this ruling, Cadbury’s separate appeal to the Federal Court (regarding the TMO decision not to register the colour purple as a trade mark) may need to be reviewed.

More information

From the LIV Bookshop
Practical guide to Australian Trade Mark law, Oberin & Fitzpatrick, $125;
Trade Mark Law In Australia, Elkington, Hall and Kell, $115.

Useful web links
Information on trade marks is provided by IP Australia, which is responsible for administering patents, trade marks, designs and Plant Breeder’s Rights in Australia: www.ipaustralia.gov.au