The Full Federal Court of Australia has sent a trade practices action launched by Cadbury Schweppes against rival confectionary maker Darrell Lea back to a lower court judge for a further hearing after considering a row about the use of evidence in the dispute.
The May 21 ruling marks a minor victory for Cadbury Schweppes in its battle against New South Wales-based Darrell Lea over the right to use purple packaging for chocolate.
The multinational chocolate maker had sued Darrell Lea under the Trade Practices Act, accusing it of misleading the public and trying to pass off its products as those of Cadbury's by selling purple-wrapped chocolates.
In April last year Federal Court judge Justice Heerey ruled against Cadbury, saying that it "does not have an exclusive reputation in the use of this dark purple colour in connection with chocolate. Other traders have, with Cadbury's knowledge, for many years used a similar shade of purple".
But at that trial the judge refused to admit evidence from three witnesses who claim expertise in the fields of marketing and branding. Heerey decided that the case was concerned with consumer decisions and that these issues are not outside the knowledge and experience of ordinary people.
Now a panel of three judges for the Full Federal Court has said that the judge was wrong: "The primary judge erred in rejecting the disputed evidence in its entirety. That is not to say, however, that there may not have been specific objections to parts of the disputed evidence that could have been taken and should have been upheld."
Once the case is returned to the Federal Court Judge Heerey may decide to dismiss the evidence for other reasons, or admit the evidence but still come to the same conclusion.
"It remains to be seen what attitude he will take," Maurice Gonsalves, a partner at Mallesons Stephen Jacques, which is acting for Cadbury in the case, told MIP Week.
Cadbury also argued that it would be inappropriate for the case to go back to the original judge on the grounds that he would no longer have an open mind about the disputed evidence. The Full Court rejected this argument, but said that the Judge could himself decide to refer the matter to another judge for a new trial.
On the issue of exclusivity the Full Court ruled that in a passing-off dispute Cadbury does not have to establish an exclusive reputation, stating: "it certainly does not follow that there cannot be a contravention of the Trade Practices Act simply because Cadbury does not establish that it has an exclusive reputation in relation to the colour purple".
No date has yet been fixed for the further hearing.
Cadbury and Darrell Lea are also in dispute over the registration of the colour purple as a trade mark.
Cadbury first applied to register the colour purple in 1998 (trade mark 779336), three years after Australia's trade mark law was revised to allow colour registrations. In 2003 the registration was opposed by Darrell Lea.
Last April the Registrar of Trade Marks gave Cadbury the green light to register the colour, but asked Cadbury to restrict its application to one shade of purple and to use it for block and boxed chocolate only. Darrell Lea appealed the decision and Cadbury then cross appealed.
A number of trade mark applications have since been made by Cadbury and opposed by Darrell Lea.
"We as lawyers have a very firm view that purple is a trade mark owned by Cadbury and we are going to get there by hook or by crook," said Stephen Stern, a partner of Corrs Chambers Westgarth, the firm representing Cadbury in its applications to register purple.
Evidence is still being compiled before the appeals are heard and Tony West, a partner of Middletons, which is representing Darrell Lea in both actions, said he believes that a hearing for this case is "some way off".
