Frucor loses the battle to register "V" green as a colour trade mark

What you need to know

• This case highlights the challenges of securing registered trade mark rights for non-conventional signs like colour and the need to ensure that the evidence can persuasively demonstrate that the colour has become recognised as a distinctive trade mark, by and of itself.
• It also serves as a timely reminder to double check that all details of a trade mark application are accurate before filing with IP Australia.

What you need to do

• Take care to accurately specify the trade mark, particularly in the case of non-traditional signs, and to ensure that the application complies with the relevant parts of the Trade Marks Act and Trade Marks Regulations.
• Stringently examine the evidence used to support an application for a colour mark to ensure that it establishes that consumers have been educated to see the colour as a brand rather than as a reference to flavour, type or some other characteristic. 

The challenges of monopolising colour

Traditionally a sign which consisted of a colour or a combination of colours could not be registered as a trade mark in Australia. Of course, colours can and often do perform the trade mark function of uniquely identifying the commercial origin of products or services. Amendments to the Trade Marks Act in 1995 accepted that non-conventional signs such as colour could be registrable as trade marks in Australia, so long as they were capable of distinguishing the goods and services of the trade mark applicant from those of other persons.

Because a colour is not inherently capable of distinguishing the products of one business from another, a trade mark applicant must provide evidence which persuasively demonstrates that the relevant buying public have come to regard the particular colour as a badge of origin, before a trade mark registration can be secured for that colour.

The recent Federal Court decision of Frucor Beverages Limited v The Coca-Cola Limited Company [2018] FCA 993 has shown just how onerous it can be to establish that a colour has attained this secondary meaning, that being one of trade source.

Background

In 2012, Frucor filed an application to register a colour trade mark for the shade of bright green that is applied to the cans and used on the branding of its energy drink ‘V’ ("V Green"). To comply with formality requirements under Australian trade mark law, an application for colour must include a pictorial representation showing the colour that is claimed and be supplemented by a written description of that colour.

It is not in dispute that V Green is classified under the Pantone Matching System, an internationally recognised system of standardising colour tones, as Pantone Colour 376C. Furthermore, Frucor had correctly described assigned V Green as Pantone Colour 376C in the written description. However, the colour represented on the colour swatch attached to the trade mark application was a considerably different shade of green.

Although the trade mark application progressed through the examination stage and was accepted, The Coca-Cola Company (TCCC) successfully opposed its registration before the Trade Marks Office. The delegate of the Registrar of Trade Marks (Delegate) found that the disconformity between the colour of the swatch and the description of the colour caused the identity of the mark to be ambiguous and consequently unregistrable. Even leaving aside the ambiguity surrounding the identity of the mark, the delegate found that Frucor's evidence of use had also failed to establish that V Green was capable of distinguishing the "energy drinks" designated by the application.

The Appeal

On appeal, Frucor argued that the ambiguity would be resolved as a matter of construction because any interested person inspecting the Trade Marks Register for colour marks would understand that the rendering of colour on a swatch could become corrupted during physical processes such as scanning or printing and would therefore readily regard the written description ie Pantone Colour 376C as a more reliable identifier of the colour of the mark. However, the court disagreed and held that the identity of the mark must be ascertained objectively rather than founded on Frucor's "subjective intentions or desires". In this case, a person presented with the conflict between the colour swatch and the written Pantone description could not be expected to know where the error would lie or how to resolve the conundrum. As such the application was found to be fatally flawed.

Frucor then attempted to resolve the ambiguity by seeking an amendment of the colour swatch. However, this request was refused by the Court because the substitution of the original swatch for a "markedly different green-coloured swatch" would substantially affect the identity of the mark as originally applied for, which is not permissible under the Trade Marks Act. The Court also deemed it inappropriate to entertain a belated amendment application by Frucor on the additional ground of correcting a clerical error or obvious mistake at such a late stage in the opposition proceeding particularly because amendments of this nature required action to be taken at the earliest opportunity.

Even assuming that the fatal flaw could have been remedied, the Court went on to find that the evidence of use provided by Frucor failed to establish that consumers would exclusively associate the V Green by itself (without relying on other elements of the product packaging, like the brand name and logo), with its energy drink ‘V’. It was accepted that the evidence, which notably included consumer surveys, showed "substantial, consistent and conspicuous" use of the V Green.

Unfortunately, the Court concluded the questions posed by the surveys were too narrow and imprecise. In particular, the Court was unimpressed that the survey sample comprised only of people who had recently purchased energy drinks and that the respondents were not asked whether they exclusively identified V Green with Frucor’s energy drinks. Furthermore, Frucor had introduced other flavoured variants of its “V” energy drink using different background colours. Each new flavour variant was represented by a different colour with the “V” logo as a unifying feature. The Court therefore concluded that consumers would understand Frucor’s “V” logo to be the relevant badge of origin and would simply associate the V Green backdrop colour as denoting the original energy drink formula from the other flavour variants.

Authors: Lisa Ritson, Partner; and Maria Sun, Senior Associate