AJPark

All retailers use colours in their branding. But have you considered just how important it is? Or whether you may be able to monopolise that colour? Colour can have a significant affect on your customers, especially if it sets your brand apart from your competitors’ brands.

We are conditioned to notice colour. But how we view colours psychologically triggers how we feel and think. Colours can even influence us to buy. That is why colours should not be underestimated from a branding perspective.

Colour plays a huge role in memory recall. It stimulates all the senses, instantly sending a message like no other communication does. Whether intentionally or not, your colour choice will project a message about your business. 

When designing a brand, it makes sense to use colour to show a perceived image based on the way that colour is noticed.

The use of distinctive colours to identify products and services are seen everywhere, from pharmaceutical goods to industrial equipment and from retail services to banking services. 

The colour choice for business livery is based on many and varied reasons. It could be a favourite of the business owner, or suggested by a branding agency, or chosen because of its universally held meanings. It is no accident that fast-food retailers use red in their branding (think MCDONALDS, PIZZA HUTT, BURGER KING) because red stimulates a desire to eat.  

Much research has gone into understanding colour psychology. Colour has a variety of specific mental associations. Here are some examples:

• white – innocence, purity, peace and contentment
• black – strength, potency, authority, stability and elegance
• grey/silver – conservative, traditional
• gold – wealth, classy
• blue – fiscal responsibility, confidence
• yellow – warning
• purple – royalty and luxury
• pink – gentleness, romance, well-being and innocence.

For many businesses, what started out as a colour for a word or logo brand, develops its own identity and becomes a consumer’s recognition touch point with that particular business.

The colour red and The Warehouse show how this works – many consumers refer to this business colloquially as “the red sheds”. The association is triggered by seeing a large building painted predominately in red.

But colour and its meaning may not be easily transferable. Colours can have different symbolic meanings in different countries and cultures. Colours can mean different things depending on the culture, situation and industry. This is just one of the many considerations a retail business looking to expand its business outside New Zealand must think about. 

Marketing research suggests that over 80% of visual information is related to colour. This extremely high indicator has led many businesses to look at ways to protect the colours that they use in their branding. And why not? Colour influences brand identity. Blue and white conjures up images of Hannahs. Think green and make the connection with BP, think yellow and Dick Smith Electronics springs to mind. 

Through consistent use of a colour, a business may be able to claim rights to that colour as its own brand, particularly if the colour becomes associated in the minds of a consumer with a specific business. If a competing business adopts a similar colour resulting in confusion between the two businesses, then the original user of the colour may be able to object and take action for passing off or a breach of the Fair Trading Act.

It wasn’t that long ago that colour could not be monopolised as a trade mark in New Zealand or Australia or in fact in many other countries as well. This situation has changed and is changing.

Our legislation now specifically provides for the possibility of registering colours as trade marks, and more and more retail businesses (and other businesses) are trying to avail themselves of a trade mark registration for the colours they use.

A colour trade mark registration gives its owner the exclusive right to use that colour on specified services or goods or both. The owner will be keen to gain such exclusivity while competitors will be wary about how such a colour registration may impact on their own business. 

It is fundamental to the trade mark system that trade mark registrations are only granted when they will not impinge on the legitimate interests of other traders. These competing interests are delicately balanced, particularly when monopolising a colour is involved.

It is generally accepted that a single colour has a low-level of distinctiveness. This means that a single colour will be seen as not being able to differentiate one retailer’s services from another’s.    

An application to register a single colour as a trade mark will almost always be rejected unless the applicant can prove that through use, the colour works as a brand for the particular services or goods. This means that it is often difficult to register colours as trade marks.  But it can be done. 

Cadbury has been able to register the colour purple for certain types of ‘chocolate confectionery’ in New Zealand. Cadbury achieved registration by filing evidence showing that it has extensively, continuously and largely consistently used the colour purple on its packaging since the 1920s. Cadbury also filed several market surveys showing the colour purple was predominately associated with Cadbury for chocolate confectionery.

Getting a trade mark registration in New Zealand for the colour purple provides Cadbury with a valuable marketing tool. It means Cadbury can prevent other traders from using a specific shade of purple on certain types of chocolate.

But interestingly Cadbury have not been as successful in Australia.  Cadbury has been battling to gain exclusive rights in the same shade of purple as a trade mark in Australia as it has rights to in New Zealand. The Australian courts have so far refused to grant Cadbury exclusive rights in the colour purple. 

And just recently Cadbury has been knocked back again. Cadbury brought proceedings against Darrell Lea Chocolate Shops alleging that use by Darrell Lea of a shade of purple “amounted to a tort of passing off and misleading and deceptive conduct”. But the court said otherwise:  “I am not persuaded that Darrell Lea, in using the colour purple, has passed off its business or products as those of Cadbury or infringed the Trade Practices Act (the equivalent of our Fair Trading Act)”.

Cadbury is not alone is its struggle to get matching rights in a colour trade mark in both New Zealand and Australia. BP has also met difficulties in registering its colour green for petrol and petrol station services. BP has been successful in New Zealand but not so far in Australia.

While registering a single colour as a trade mark in both New Zealand and Australia is not without its challenges, if achieved it can prove to be very powerful. 

Any business looking to trade in both New Zealand and Australia must understand the business landscape in each country is different.  There are so many differences that it is almost impossible to list them all.  Yes, we have CER and yes, the Intellectual Property Offices in each country have looked at ways at aligning their practices, but still differences remain. Our laws are not always the same and this can mean different outcomes when seeking trade mark registration.   What is clear though is that on both sides of the Tasman, registering a colour trade mark will inevitably require filing evidence to show the particular colour is distinctively associated with your retail business.

The difficulties likely to be encountered do not mean that a business looking to trade in both countries should not try to get equal rights in its trade marks – colours, words, logos, and taglines.

Increasingly, retail businesses trade on both sides of the Tasman.   Even if you have only just set up shop in New Zealand, it is important to think about future expansion to Australia and beyond if this is a real possibility for you. 

Thinking strategically of what rights you want for your business will ensure that you take steps to try to get them. Even holding a registration in one country may be enough to encourage a competitor to adopt a different colour as its brand in the other. No business wants to have different word, logo or colour brands in different countries if it can be avoided – the cost can be significant in producing multiple marketing and promotional materials. 

Colour is one of the most important parts in creating a brand identity. The purpose of a brand identity is to encode your brand in the memory of your consumers. While colour marks suffer hardships which are not faced by the more usual word and logo trade marks, this should not stop you seeking advice on whether you are able to protect your chosen colour as your own.

An edited version of this article was published in NZ Retail, July 2008.

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  Corinne Blumsky

  Partner