The Coca-Cola Company v Frucor Beverages Limited [2016] ATMO 38

The Coca-Cola Company (Coca-Cola) was recently successful in its opposition against Frucor Beverages Limited's (Frucor) application for the colour Pantone 376c Green in relation to its V energy drinks. This decision highlights that colour marks remain difficult to register and that survey evidence should be submitted with caution. However, Frucor has appealed to the Federal Court, so there may further developments yet.

Background

In 2012, Frucor applied to register the colour Pantone 376c Green in relation to energy drinks. Coca-Cola opposed Frucor's application on two grounds, namely that:

  • the colour Pantone 376c Green is not inherently adapted to distinguish Frucor's energy drinks; and
  • Frucor's application was defective.

Coca-Cola's opposition was heard by a Delegate of the Registrar of Trade Marks.

Decision of the Delegate

Coca-Cola failed to make out that Frucor's application was defective, however it succeeded in establishing that the colour Pantone 376c Green is not capable of distinguishing energy drinks. The Delegate accordingly refused to register Frucor's trade mark.

Reasoning

Coca-Cola argued that Frucor's application was 'fatally flawed' because Frucor attached the wrong specimen of the colour green to its application, while claiming the correct Pantone colour in its endorsement to the mark. However, the Delegate was not convinced that this was enough to establish that Frucor's application was defective, but considered this fact to be relevant in deciding whether the colour Pantone 376c Green was capable of distinguishing Frucor's energy drinks.

The Delegate accepted Coca-Cola's argument that Frucor's use of colours other than green for at least 30% of its energy drinks (for example, it uses the colours blue, orange, silver and black in connection with its other variants, to indicate different flavours and/or ingredients present), together with its use of its V logo trade mark, diluted the distinctiveness of the colour Pantone 376c Green. Further, the fact that the colour green is already used by a number of manufacturers in the non-alcoholic beverage market to indicate that the beverage contains 'green' ingredients (such as 'lime'), was such that the colour Pantone 376c Green would not be perceived by consumers as a badge of origin that distinguished Frucor's energy drinks from similar drinks produced by other companies.

Frucor submitted survey evidence in support of its defence, however the Delegate did not find this evidence compelling. There were issues with the evidence, being:

  • the survey sample was too narrow;
  • the survey was conducted some two and a half years after the filing date, which meant that it was not useful in establishing that the colour Pantone 376c Green had become distinctive of Frucor's energy drinks by the filing date; and
  • less than 50% of the participants in the survey did not associate the colour Pantone 376c Green with any brand of drink and, of the 50% who did, less than half of them said that they identified the colour Pantone 376c Green with Frucor's energy drinks.
  • in the Delegate's view, if the colour Pantone 376c Green was serving as a badge of origin, then more than 50% should have associated the colour Pantone 376c Green with Frucor's products.

Observations

This decision confirms that colour marks remain difficult to register, particularly when the colour the subject of an application has been used in conjunction with another colour. Further, we note that the Office remains reluctant to accept survey evidence, and any attempt at survey evidence requires great precision.

Had Frucor filed the correct representation of the mark in its application, it may have been more difficult for Coca-Cola to prove that Frucor's mark (because it was defined ambiguously in the application) was not capable of distinguishing its energy drinks under section 41(2) of the Trade Marks Act.

We note that Frucor subsequently filed separate applications for "Pantone 376" (together with a sample of what we believe is of Pantone 376c) as well as for the depiction of the can. Interestingly, the endorsement accompanying the new claim for green is different from the first application. Also interesting is the fact that the endorsement in the application for the can does not appear to claim colour as a feature of the mark.

Claiming colour as depicted on a product (e.g. a specifically shaped can) may have better prospects of success (though such a registration may not afford its owner particularly broad rights to enforce).

With the original decision on appeal, and further applications to make their way through the examination process, further developments in this matter will likely provide more interesting food for thought on the issue of colour as a trade mark.