Inaccurate representation proved fatal to an application to register the colour green and extensive use of the colour could not save it from being deemed non-distinctive. The decision of Frucor Beverages Limited v. The Coca-Cola Company [2018] FCA 993 issued on 2 July 2018 clarifies a number of issues of interest to trade mark owners regarding protection of colour marks, including assessment of evidence of use in support of a colour mark application, the importance of accurately and clearly describing colour representations and the grounds of opposition available.

Background

Frucor Beverages Limited (Frucor), a manufacturer of beverage products in New Zealand and Australia, sought to register the colour green in relation to energy drinks in class 32. Frucor described the colour as Pantone 376C (V Green) "as shown in the representation attached to the application". However, the representation attached to the application was visibly darker and different to V Green.

The Coca-Cola Company (Coca-Cola), owner of rival energy drink Mother (which is also sold in green coloured cans), opposed the application on the basis that it was false in material particulars as the representation of green was inaccurate and that the mark applied for was not capable of distinguishing Frucor's energy drinks from those of others. The Registrar's delegate rejected the first ground of opposition but upheld the second ground on the basis that Frucor's ambiguous description of the mark rendered it incapable of distinguishing Frucor’s energy drinks. Furthermore, notwithstanding the discrepancy, the delegate held that Frucor's evidence of use failed to establish that, before the filing date of the application, V Green had become distinctive of Frucor's energy drinks. Consequently, the delegate refused registration of V Green.

Frucor appealed the decision to the Federal Court and sought leave to amend the representation of the mark attached to the application to V Green.

Amending the application

Frucor sought to amend its application under section 65 of the Trade Marks Act 1995 (the Act), which allows the Registrar to amend an application provided the amendment does not substantially affect the identity of the trade mark. Frucor argued that the written Pantone reference on the application was a more reliable identifier of the mark intended to be covered by its application than the representation of the colour included with the application. However, the Court denied the request as it considered that the amendment substantially affected the identity of the mark and was therefore not a permissible amendment under section 65.

Frucor also sought leave to amend its application under section 65A of the Act, which is broader in scope than section 65 as it permits correction of clerical errors or obvious mistakes if it is fair and reasonable to do so. The Court found that Frucor had known about the error for at least 2 years but elected not to seek an amendment. Instead, it persevered with the trade mark application in its erroneous form and had provided no explanation for the delay in seeking amendment. As a result of Frucor's inordinate and unexplained delay, the Court refused to grant leave as it would inevitably introduce further delays in determining the opposition.

Evidence of use

The Court accepted that Frucor's use of V Green before the filing date was extensive, with over 1.1 billion energy drink cans sold bearing the V Green colour and the relevant media spend between 2000 - 2012 amounting to approximately $50 million. The Court also acknowledged that consumers associated V Green with Frucor's beverages. However, the Court was not persuaded that such an association was sufficient to warrant registration in light of its finding that the evidence did not demonstrate use of V Green as a trade mark. Two reasons were given for this finding. First, the colour V Green ordinarily appeared in the background on product packaging with Frucor's distinctive V logo (shown alongside) consistently appearing more prominently on packaging and in marketing collateral. As a result, the Court took the view that consumers would regard the V logo rather than the background colour as the product's badge of origin.

Second, the Court found that energy drinks had to be seen in the broader context of non-alcoholic drinks, which often use colour to signify product flavour and denote varietals. Frucor's own use showed that it used different colours to "…denote varietal differences, and to distinguish products in the range from each other and from its core product - the hero in the range."

Therefore, the Court held that, notwithstanding Frucor’s use of V Green being pervasive and fundamental to its marketing strategy, it was merely reminiscent of its core product and essentially descriptive, not distinctive in the trade mark sense of indicating origin.

Additional grounds of opposition

Coca-Cola sought to rely on the additional ground of opposition that the application does not satisfy section 27(2)(a) of the Act, which provides that a trade mark application must be in accordance with applicable trade mark regulations. The Court clarified that an opposition can only be based on opposition grounds which are identified as such in the Act. A failure to comply with the regulations is not in itself a ground of opposition and therefore cannot be relied upon in opposition proceedings.

Take away points for brand owners interested in protecting colour marks

The decision highlights the challenges faced by trade mark owners in successfully registering colour trade marks even when there is voluminous evidence of use. It is not sufficient merely to show an association between a colour and a brand; it must also be demonstrated that the colour was used in a trade mark sense to indicate origin.

The decision also underscores the importance of describing colour marks accurately and of ensuring that any errors in identifying the mark are corrected at the earliest opportunity.

The decision further clarifies that the mere fact that a trade mark application has not been made in accordance with applicable trade mark regulations cannot without more be used as a ground of opposition.

Battle for green in relation to energy drinks is not over yet

Frucor has since filed another application to register its V Green colour (Pantone 376C) in relation to energy drinks, albeit with a narrower endorsement, being the predominant colour applied to a can. That application is currently under examination.

Thanks to Aparna Watal and Judy King for their assistance in preparing this alert.

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