When you've got a good idea for a product, service, logo or other element that could benefit or otherwise improve society, it makes sense that you would want to protect it. You want to make sure that no one steals your idea and claims it as their own with the intent to profit off of it. You might have an important vision for your idea and want to see it come to fruition. If you trade mark it by registering the idea with the government you have the rights to it and its future.
Interestingly, you can actually do this with a whole different class of ideas: colours. Let's say you have a logo or product that uses or can otherwise be linked to a very particular colour – you may be able to, under specific circumstances, trade mark that colour so others can't use it. This way, different companies' products won't be linked to yours and potentially have ramifications on your brand.
But how are colour trade marks enforced? How would you go about making sure your intellectual property is protected?
The Australian Trade Marks Act 1995
The Australian Trade Marks Act 1995 is the piece of legislature that determines what can and cannot be trade marked – and, by definition, colours are included. This is the case as long as the hue in question is adapted to distinguish the specific product of the trade mark owner.
With that being said, according to the Intellectual Property Owners Association, attempting to trade mark a single colour (as opposed to a combination of colours, such as when you are trade marking a logo or product that contains a multitude of very specific hues) is more difficult.
Proving colour distinction can be challenging, though not impossible, in the court system.
Reason for this is that it would require strict documentation and a lot of legal aid, likely by well-versed and highly experienced legal counsel.
Other distinctions that would deem a trade mark unlikely include the colour occurring in product naturally, those that are highly common within the industry and those that serve a need.
Enforcement: The court system
The main method of enforcing a trade mark on a colour is by taking a case where there may have been trade mark infringement to the court system. Federal courts, federal circuit courts and the supreme courts of each Australian state and territory each trade mark cases, but most are heard within federal courts.
Cases are brought to court when there are alleged disputes against the Trade Marks Act – when the owner of the colour believes he or she has a right to civil relief because of such infringement. There are three categories of such an infringement:
- Infringement on goods and services for which the colour is registered
- Infringement on goods and services that are related to or of the same description for which the colour is registered
- Infringement on goods and services unrelated to those for which the colour is registered (relating to colours that are "well-known" in Australia)
The trade mark owner or authorised user can file an infringement action to bring this case to court. Authorised users are allowed to do so without the trade mark owner, as long as the owner has failed to take any action themselves within two months of being requested to do so by the authorised user.
Note that there is a statute of limitations that applies to when trade mark owners and/or authorised users can file a colour trade mark infringement case and bring it to court. In all Australian states and territories, with the exception of the Northern Territory, the statute is six years from the date that the first act of trade mark infringement occurred. If the infringement happened in the Northern Territory (and is being brought to a court system in the Northern Territory), that statute of limitations is decreased to three years from the first infraction.
The court case
What can you expect if your colour trade mark case does go to court? The usual time for trade mark court cases is between 12 and 18 months, from the beginning of court proceedings to the receipt of judgment. However, in 2016, the federal court system did begin using concise statement procedures to expedite hearings. This way of doing things is only for non-complex cases, though, and won't be used in every trade mark situation.
What can you expect if your colour trademark case goes to court?This doesn't include filing, discovery and payout, if applicable, so the entire process can last years. As such, it is important to discuss your options and proceedings with a legal team that knows what to do, so as to expedite wherever possible. This can help streamline all steps and ensure that nothing is missed or held up – after all, a missed filing or unenclosed piece of evidence in a trade mark case can either add more time onto the proceedings or result in a negative decision.
Both during the trial and after the receipt of judgment, further enforcement can be given via injunctions. This can include interlocutory injunctions, which are given out at the beginning of the trial to ensure that the colour in question is not being used during the court proceedings. This would potentially stop any rights from being infringed upon if the trade mark is being violated. With that being said – if the defendant is found to not be in violation of a colour trade mark and an injunction had been granted, the plaintiff will likely have to pay compensation for any damage done or business lost as a result of the colours not being used during the trial.
At Alder IP, we're highly experienced with the ins and outs of trade mark law and protecting your intellectual property, whether you're considering trade marking a colour or another aspect of property. To learn more about your rights and to make an appointment to speak to a member of our team, contact us today.