Paint rivals mix it up in off-white colour clash

By KATHERINE HOBY

A fight has erupted between the country's biggest paint firms over two of the most common colours used in homes.

Resene Paints has taken out an injunction to stop rival Dulux using the names Spanish White and Pearl Lusta.

The two off-white shades are among the favourites of home decorators and rank in Resene's top-10 sellers.

Resene began the action after Dulux, whose parent company is Australasian giant Orica, unveiled in March its new "Directions in White" range, which contained Spanish White and Pearl Lusta.

The injunction means that Dulux cannot call any paint colour by those names. Paint, test pots, and colour charts must be withdrawn from sale or amended.

Resene general manager Nick Nightingale said his company's colours were "iconic classics".

"We have built up a tremendous amount of goodwill in the names and are vehement that people shouldn't be able to copy our work."

Both colours had played a vital role in the range since the 1970s, he said. Architects, designers, decorators and customers associated the colours with Resene.

"It's not the colour itself. You can't own a colour. It's the name with the colour we object to."

Orica has hit back, describing Resene's move as "an aggressive act against the general interests of New Zealand consumers".

Dulux NZ general manager Andrew Coleman said it was incorrect to describe the colours as distinctive to Resene.

"It is very common for customers to come into our retail outlets asking for Spanish White or Pearl Lusta."

He argued that it was common for manufacturers to adopt widely used colour names. Resene had used Dulux names, including Racing Green.

Mr Coleman said Dulux had never taken legal action against Resene over "adopting" some names.

"The injunction is an interim decision and we are sure common sense will prevail - at a full trial."

Interior designer and colour consultant Donald Grant Sutherland said he could understand why Resene was upset.

"When I think Spanish White, I think Resene ... I don't think of it as a generic colour."

He said Spanish White and Pearl Lusta were extremely popular "safe" colours.

"They are so well-established on the market. I can certainly see why we've got a bit of a fight on our hands."

Damian Broadley, a partner in A.J. Park Intellectual Property Lawyers, said Resene should have registered the colour names as trademarks years ago.

He said the case might hinge on what the colour names meant to people.

"If you say the name to people and they think Resene, then Orica shouldn't be doing it. If they think it's a colour, Resene are in trouble."

The trademark application register shows that a Resene application to register Spanish White as a trademark has been accepted. The three-month period for objections to be lodged expires on July 29. Applications for Pearl Lusta (Resene) and Pearlustre (Orica) are still pending.

It is not the first time Orica and Resene have sparred over colours. They reached a verbal agreement three years ago in which Orica promised not to include the colours in its Dulux range but could put them in the budget range British Paints.