A former IP lawyer explains the latest twist in the Gib supply crisis.

Aotearoa continues to face a shortage of Gib plasterboard, which is manufactured solely by Winstone Wallboards, a subsidiary of listed building and construction giant Fletcher Building. Fletcher Building controls an estimated 95% of the plasterboard market. Demand is going gangbusters, yet supply remains strained. So housing developer Simplicity Living cancelled its Gib orders and looked overseas for supply, securing high-quality plasterboard from Thailand at a cheaper price. “There’s a cost of building crisis in New Zealand, and the hubris of Fletcher Building is only making it worse. So we’re doing something about it,” said Simplicity Living managing director Shane Brealey.

However, Simplicity Living was told it couldn’t import blue, let alone mauve, green and pink, plasterboard because the colours were trademarked by Fletcher Building. Brealey told Stuff he believed the trademarks were “clear blocking tactics” so the company could protect its monopoly. In response, Fletcher Building chief executive of building products Hamish McBeath said only specific shades of blue, green, mauve and pink had been trademarked, “to simply differentiate Gib plasterboard products”. 

Former IP lawyer Narly Kalupahana explains that trademarks let the public connect words, logos and, in this case, colours, with the manufacturer or source of a product. Think of Nike’s tick logo and its shoes, or McDonald’s golden arches logo. Which begs the question…  

The Spinoff: Can you trademark a colour?

Narly Kalupahana: Colour trademarks are not as controversial as people think. Colours can and do, over time, become trademarks. If you’re driving and you see a green petrol station up ahead, even before you see the name of it, you know what it is. Again, banks – you see a black and yellow bank advertisement, you’re probably going to assume it’s ASB. 

Could an easy workaround be importing blue plasterboard, for example, that is a completely different hue to the one that Fletcher has trademarked?

That comes down to trademark infringement rules. When you’re comparing trademarks, which get quite specific in their registrations, they usually have an image showing the colour, accompanied with either the CMYK [cyan, magenta, yellow and key colour printing format] or the Hex or Pantone colour that matches. If blue plasterboard comes in, and it’s a slightly different shade of blue, the infringement test is: are they the same or similar? And are the goods they relate to the same? If they are not identical, the third part of the test is, is it likely consumers will be deceived or misled by this [shade] into thinking it’s the other blue? It’s hard to know – it’s one of those things where there’s no right or wrong. It depends on at what point the trademark owner reaches out and goes “actually, it’s getting too close for us now”. Realistically, you want to import the most generically beige or brown board you can.

Are Fletcher’s colour trademarks legal and/or ethical?

It’s a really tough one because Fletcher has obviously spent a lot of money on their rights, the trademarks have been in place for 20-odd years without really being controversial at all, and colour trademarks are not unusual or controversial – in fact, they’re pretty damn common. But at times like this, when there’s a massive shortage, certain countries have the ability to override patent rights for the greater good of the country. Now, I can’t think of a way you would do that for trademarks. But it really comes down to whether Fletcher would enforce against someone bringing in coloured plasterboard that was very close to its plasterboard. I suspect Fletcher wouldn’t be happy about it, but it would be brave of it to sue people for that. 

It’s a pretty unenviable position to be in. The world’s gone crazy, Fletcher is short on product, it’s trying to keep up, people want to import. It’s damned if it does and damned if it doesn’t because it’s hurting its own IP by letting all this stuff in. But reputationally, Fletcher will also get hurt if it doesn’t let stuff in. To me, the most commonsense thing would be for Fletcher to say “if we can come to some agreement that if you’re going to bring it in, and it happens to be the same as ours, as long as the quality is up there, we can license it for a temporary period of time”. Might be a nice way around it but then again, it’ll take time. But that would seem to me to be the best PR and keep-the-lawyers-out-of-it solution.