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Tuesday, April 18, 2017

Fizzy fight froths up again

By David Bennett, Law Graduate

The makers of V energy drink have improved their position a little bit by beating back a pre-trial application by nemesis Coca-Cola Company to block crucial evidence from being read in the appeal to register the colour mark.

Frucor Beverages now has the go-ahead to refer to affidavit evidence that describes two market surveys which may prove crucial in its de novo appeal against the Registrar's refusal in 2016 to register Pantone 376C green (which they called V green) in respect of energy drinks.

We've previously written about The Coca-Cola Company's successful opposition to Frucor's application to register V green as a trade mark in respect of energy drinks. In short, Coca-Cola convinced the Registrar that Frucor's application was flawed for two reasons:

  • the application was technically flawed, because the trade mark was said to be for one shade of green, but the colour attached to the application was for a different shade; and
  • Frucor had not produced sufficient evidence to demonstrate V green had acquired distinctiveness.

Appeal by Frucor

Frucor has appealed the Registrar's decision with the case to be heard in the Federal Court in June 2017. At issue is whether the Registrar erred in finding V green had not acquired distinctiveness through Frucor's history of use.

Pre-emptive strike by Coca-Cola

Not one for taking things lying down, on 22 February Coca-Cola responded by making an interlocutory application seeking advance rulings on the admissibility of evidence under s 192A(a) of the Evidence Act 1995 (Cth).

Coca-Cola's application sought to pre-emptively cut out two affidavits by Mr Garreth John Chandler, the managing director of the market research company engaged by Frucor to conduct consumer recognition surveys. Those affidavits were made on 30 November 2016 and 20 February 2017 and primarily deal with two market research surveys carried out in January 2015 and January 2016, well after the 15 June 2012 filing date for the trade mark application. That evidence is presumably fundamental to Frucor's appeal case, given the evidence filed at the opposition hearing was held to be unconvincing.

Coca-Cola contended that Mr Chandler’s affidavits should be rejected for lack of relevance under s 55(1), s 56 or s 57(1) of the Evidence Act; or alternatively excluded under s 135 as their probative value is substantially outweighed by the danger the evidence given by them might cause or result in undue waste of time or be unfairly prejudicial.

Frucor submitted that the affidavits firstly gave evidence of Frucor's use of Pantone 376C as a trade mark before 15 June 2012; and secondly, shed light on whether, because of the extent to which Frucor used Pantone 376C, that colour in fact distinguished those energy drinks at 15 June 2012 as being Frucor’s.

Reasons for dismissing the interlocutory application

Justice Yates found the first affidavit dealt with subject matter beyond just the surveys, such as the nature of brands and the use of colours in retail marketing. As it was not suggested this broader subject matter was not relevant, his Honour refused to make what would amount to a blanket ruling rejecting the totality of the evidence.

His Honour noted the second affidavit seeks to tie the results of the surveys to the relevant time (15 June 2012), on the basis of a number of assumptions concerning Frucor’s use of Pantone 376C in the 13 year period from 1999 to June 2012, including assumptions about Frucor’s advertising spend and the number of units of its energy drink that were sold. Therefore the affidavit was linked to other affidavit evidence concerning Frucor's use of Pantone 376C in that period.

When considered in that context, Justice Yates found the results of the two surveys may well be relevant, in terms of s 55, or at least provisionally relevant under s 57 of the Evidence Act, to the issue of whether Pantone 376C distinguished Frucor’s energy drink from the energy drinks of other traders.

His Honour rounded things out by finding the affidavits are not so lacking in probative value that they would cause or result in an undue waste of time or be unfairly prejudicial to Coca-Cola, and dismissed Coca-Cola's s 135 application.

To avoid any hue and cry, Justice Yates expressly stopped short of ruling the affidavits are admissible. Instead, his Honour simply dismissed the interlocutory application, noting that Coca-Cola had not sought to address all aspects of the admissibility of the affidavits. Thus the matter of admissibility can (and presumably will) be detailed further at the appeal hearing in June 2017.

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