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Monday, November 21, 2016

It's not easy being green

By Natasha Dixon, Lawyer

A recent Trade Marks Office decision, following an opposition hearing, has left the company that manufactures and markets V energy drink (V), red-faced as its application to register a colour mark was refused by the Registrar of Trade Marks.

In 2012, V applied to register 'Pantone 376c Green' (V Green) as a trade mark in respect of energy drinks. The application was opposed by The Coca Cola Company (Coca Cola), on the basis that the V Green was not inherently adapted to distinguish V's energy drinks.

A colourful argument 


The first limb of Coca Cola's case was to argue that the application submitted by V was 'fatally flawed' as V had identified the colour it was claiming by reference to its Pantone colour code, but attached the wrong colour green to its application to be used on the endorsement. The Delegate agreed that the incorrect endorsement obliged him to refuse the application, and noted that rectifying the error would substantially affect the identity of the claimed trade mark, and so the application could not be amended. As a result, it was found that, because the V Green itself was defined ambiguously, it was not capable of distinguishing V's energy drinks.

Despite this decision, the Delegate went on to consider whether the V Green had acquired distinctiveness through use as a trade mark. On this point, Coca Cola argued that V had only ever used the colour on its products in conjunction with the V logo trade mark, and in addition, that around 30 per cent of its energy drink products used a colour other than the V Green; for example, V used blue, orange, silver and black in connection with different flavoured energy drinks.

Contrary to Coca Cola's contention, the Delegate found that the fact that V had used variant products that did not display the V Green was beside the point. The court accepted that the V Green could become a flag or marker by which a consumer was guided to the product, however this was not enough to conclude that consumers would perceive the colour alone as being used as a badge of origin which distinguished V's energy drinks from the similar goods of others. Instead, it was found that consumers would perceive the V logo (appearing on 100 per cent of the energy drinks, packaging and promotion) as the primary identifier in the trade mark sense. The V Green would simply be perceived as part, albeit an important part, of V's corporate get-up.

This conclusion was supported by the fact that the colour green was already commonly used by a number of manufacturers in the non-alcoholic beverage market (such as, for example, in respect of lime flavoured drinks).

In its attempts to argue that the V Green had become distinctive of its goods and services, V submitted survey evidence (alongside sales and marketing figures), yet this evidence was found to be unconvincing, as it had been conducted two and a half years prior to the filing date and only 24 per cent of participants associated the V Green with V's energy drinks. As a result, the Delegate was not satisfied that the survey evidence established that the V Green had become distinctive of V's energy drinks, and that the V Green was not registrable as a trade mark.

I can sing trade mark a rainbow 


The decision reinforces the fact that colour trade marks are inherently difficult to register in Australia unless the applicant can demonstrate an overwhelming history of use. As such, in comparison to more conventional trade marks, registration of colour marks is relatively rare in Australia. However, once in a blue moon Australian trade mark owners have been successful in registering a colour as a trade mark. Examples include Christian Louboutin's registration for the colour red for the soles of its women's shoes, orange in respect of wine for Veuve Clicquot, and purple registered by Cadbury for chocolate, and some other confectionary items, and Whiskas for cat food.

There appears to be a similar, if not stricter, situation in some other jurisdictions. In the EU, Cadbury's attempt to register the colour purple has been rejected, as has Glaxo Smith Kline's application to register two shades of purple in respect of an inhaler. In typical English fashion, the shade of green used by Harrods is one of the few colour trade marks that has been accepted for registration, and in the United States, the brown of UPS trucks and orange of Home Depot stores has been registered.

The test in each of these jurisdictions has elements of the test in Australia – the colour trade mark must be shown to have become distinctive of the brand within the market. Jurisdictional quirks have meant some registries are more difficult to crack than others.

Conclusion 


If your business is looking to apply for a colour trade mark, it will most likely need to be prepared to demonstrate that the colour has become synonymous with the brand through extensive use, and would not instead be seen by consumers as a reference to a flavour or other characteristic of the product (in certain limited circumstances however, colour can be registered without extensive use. See the Philmac case for an excellent analysis on the registration of colour trade marks). Furthermore, where a colour mark has solely been used in conjunction with a word or logo mark, it could be more difficult to prove that it is the colour that acts as the badge of origin.

V has since appealed the Frucor decision to the Federal Court. Whatever the outcome, it seems apparent that, in the infamous words of Kermit the Frog – it's not easy being green.

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