Frucor fails to get the green light in trade mark colour claim

WHO SHOULD READ THIS

• Holders of trade marks in Australia.

THINGS YOU NEED TO KNOW

• Using a colour as part of your corporate branding will not of itself be sufficient for the colour to act as a ‘badge of origin’, which is required for trade mark registration.

WHAT YOU NEED TO DO

• Ensure all details of a trade mark application are accurate before filing with IP Australia and that your survey evidence is broad enough to show sufficient reputation as at the filing date.

A recent IP Australia trade mark office decision provides guidance on the requirements for registering a colour as a trade mark in Australia pursuant to the Trade Marks Act 1995 (Cth).

In Coca-Cola Company v Frucor Beverages Limited [2016] ATMO 38 (22 June 2016), the Coca-Cola Company was successful in its opposition against Frucor Beverages Limited’s attempt to register the colour green as a trade mark for energy drinks in Australia.

Background

Frucor, the maker of ‘V’ energy drinks, applied to register the block colour ‘Pantone 376c’ (Green Colour) as a trade mark in respect of energy drinks in class 32. Coca-Cola, the owner of rival energy drink MOTHER, opposed Frucor’s trade mark application on the grounds that the trade mark did not distinguish Frucor’s goods (section 41 TMA) and that the trade mark application was defective (section 62(b) TMA).

In rejecting Frucor’s trade mark application for registration and upholding Coca-Cola’s opposition, the Hearings Officer found that:

• Frucor’s trade mark application contained a discrepancy that created ambiguity. In particular, the application described the colour claimed as ‘Pantone 376c’, however the swatch representation was a significantly darker shade. This greatly affected the identity of the trade mark and the application was refused pursuant to section 41(2), and
• in any event, the Green Colour did not distinguish Frucor’s energy drinks as the Green Colour did not function ‘as a trade mark’ pursuant to section 41. While Frucor did use the Green Colour extensively, Frucor’s use was not sufficient because:
  • the Applicant’s ‘V’ Logo, which used the colour green, was understood by consumers as identifying the source of the goods and was the relevant ‘badge of origin’ rather than the Green Colour itself being the ‘badge of origin’
  • the Green Colour, whilst a key component in Frucor’s branding, was merely part of Frucor’s corporate ‘get-up’ as opposed to functioning as a badge of origin
  • Frucor’s use of the Green Colour merely enabled consumers to identify the original energy drink formula compared to other variants
  • it is industry practice to use a colour to represent the flavour of a drink i.e. green to represent kiwi or lime flavor, and
  • Frucor’s survey evidence was too narrow and insufficient to establish that the Green Colour was distinctive for energy drinks as at the filing date of the trade mark application (in particular, only 24% of participants identified the Green Colour with Frucor’s brand).

What does this mean for me?

This decision highlights:

• the importance of ensuring all details of a trade mark application are accurate before filing with IP Australia
• using a colour as part of corporate ‘get-up’ and branding will not of itself be sufficient for the colour to act as a ‘badge of origin’, which is required for trade mark registration, and
• survey evidence should be broad, and show sufficient reputation as at the filing date.
• Further developments are likely as Frucor has filed a notice to appeal in the Federal Court of Australia.

What you need to do

If you require assistance with trade mark applications in relation to colours or general advice in matters relating to intellectual property, please contact us.

This publication covers legal and technical issues in a general way. It is not designed to express opinions on specific cases. It is intended for information purposes only and should not be regarded as legal advice. Further advice should be obtained before taking action on any issue dealt with in this publication.