Frucor Beverages Limited v The Coca-Cola Company  FCA 993 (2 July 2018)
Frucor was unsuccessful in its appeal against the Registrar’s decision which upheld Coca-Cola’s opposition to registration of its trade mark application for the colour green.
Frucor’s trade mark application was filed on 15 June 2012 for the colour green in respect of energy drinks in class 32. The mark was described as consisting of the colour green (Pantone 376c), as shown in the representation attached to the application, applied as the predominant colour to the goods, their packaging or labels. However, the colour swatch accompanying the application was not actually Pantone 376C.
The Registrar’s delegate found that the disconformity between the description and the colour swatch was a fatal flaw and because Frucor had defined the mark ambiguously, the mark was not capable of distinguishing Frucor’s energy drinks. Further, if the mark was actually the colour attributable to Pantone 376C, the evidence did not establish that colour in fact distinguished the relevant goods due to Frucor’s use prior to the filing date.
Frucor had been selling its “V” energy drinks in Australia in packaging prominently displaying the “V” logo with Pantone 376C as the background colour since 1999 (the “V Green packaging”). However, up until 2012, Frucor also sold other variants with other coloured packaging.
Yates J considered the identification of the trade mark to be the threshold question. His Honour was not persuaded by Frucor’s argument that it can be identified as the colour Pantone 376C as a matter of construction of the application. The wording of the written description cannot be given primacy over the representation of the mark itself. The description relates to the mark as represented and is to be ascertained objectively, not by reference to Frucor’s subjective intention. A person inspecting the Register would be presented with a conundrum when it becomes manifest that the description and the representation are in conflict and not be sure how to resolve this conflict to understand precisely what mark has been applied for.
Yates J also took the view that s27(2) which provides for the form in which a trade mark application is to be made is not a ground for rejection and hence is not a ground for opposition. The Trade Marks Act provides for a bifurcation of matters going to compliance with the Act and the separate subject of whether there are grounds under the Act for rejecting an application. This is despite the 2006 amendments to the Act resulting in a broadening of the grounds of rejection which are also available as grounds of opposition.
His Honour then went on to consider the capacity of the mark applied for to distinguish Frucor’s energy drinks under s41 (as it stood prior to the 2013 amendments). Frucor accepted that the mark it claims is not to any extent inherently adapted to distinguish, so it had to satisfy s41(6), namely that it did in fact distinguish these goods due to the extent to which this mark was used prior to the filing date.
Yates J found that, because the mark applied for was defined ambiguously, it is not possible for Frucor to satisfy s41(6) and, for that reason alone, registration should be refused.
Nonetheless, His Honour also considered s41(6) on the assumption that the mark applied for is Pantone 376C. It was not disputed that the background colour used on the V Green packaging can be adequately and appropriately described as Pantone 376C. However, Yates J was not persuaded that, in the context and setting of Frucor’s use on the V Green packaging, that the Pantone 376C colour functioned as a trade mark. His Honour considered that the “V” logo functioned as the badge of origin for Frucor’s energy drinks. Also, the context and setting ought not be confined just to energy drinks as contended by Frucor. Rather these drinks should be considered as part of the broader market for other non-alcoholic beverages including soft drinks, sports drinks, fruit juice drinks and bottled water. In this broader context and setting, colour is used to denote product flavour and some varietal characteristics of the beverages. Indeed, Frucor’s evidence 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 in V Green packaging. In this way, Frucor’s use of V Green packaging was essentially descriptive and not use in a trade mark sense. This colour packaging denoted the core product in the “V” energy drink range and consumers would have regarded the V Green packaging as designating the core product, and nothing more. Yates J acknowledged that more than one trade mark can be used in relation to a given product, but was not satisfied that, before the filing date, the Pantone 376C colour functioned as a separate trade mark alongside and independently of the “V” logo.
Frucor relied on survey evidence conducted in January 2015 and January 2016, but Yates J had some concerns with their reliability, particularly the conclusions sought to be drawn by Frucor and the questions asked which were presented as identifying colours with particular brands, rather than colours which were presented or understood as brands.
As a result, even if the mark applied for is Pantone 376C, Frucor’s evidence did not satisfy the requirements of s41(6) in establishing factual distinctiveness as at the filing date.
Yates J also considered whether the court has power to amend Frucor’s trade mark application so that the colour representation is consistent with the Pantone 376C description. His Honour considered that such power is to be exercised conformably with the boundaries and limitations imposed on the Registrar’s powers of amendment, particularly s65(2) which directs that an amendment to the representation of a trade mark should not be made if it would substantially affect the identity of the trade mark at the time when particulars of the application were published. Yates J considered that the amendment sought by Frucor would be contrary to s65(2) because the substitution of a markedly different green-coloured swatch for the swatch initially filed would substantially affect the identity of the trade mark. In any event, any such amendment would also lack utility because Frucor cannot satisfy s41(6).
Frucor also sought leave to amend its Notice of Appeal to include s65A (other amendment to correct a clerical error or obvious mistake) as the source of power for the amendment to the mark applied for, but Yates J declined to do so because such an amendment would also lack utility, s65A is directed to amendments by the Registrar rather than the court and it is not appropriate for such an amendment application to be entertained at this late stage in the opposition since it would introduce further delay in determining the opposition. Frucor also did not explain why it delayed making an amendment application under s65A.
Frucor has other pending trade mark applications filed on 3 December 2015 and 30 July 2018 for a green coloured can and the colour GREEN which are still under examination.