THE COCA-COLA COMPANY V FRUCOR BEVERAGES LIMITED [2016] ATMO 38 (22 JUNE 2016)

Frucor Beverages is the owner of the V energy drink business. It applied to register the colour green (Pantone 376c) as a trade mark in respect of energy drinks. The application was accepted for registration on the basis of evidence of use.

The Coca-Cola Company opposed the registration of the application, including on the basis that the colour green was not capable of distinguishing the applicant’s goods.

The first line of argument related to the endorsement (shown below) and whether the representation attached to the application was, in fact, the colour Pantone 376c.

Endorsement: The mark consists 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.

On that point, the opponent led expert evidence that the representation of the colour was Pantone 7727c and not Pantone 376c (the respective colours are shown below).

Click here to view image.

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The Hearing Officer agreed that the colours were not the same and this would prove fatal to the prospects of the application.  Not only was the endorsement incorrect and, but it could not be altered as doing so would ‘substantially affect the identity’ of the trade mark (which is not allowable).  The overall conclusion on this point was:

[B]ecause the Claimed Mark itself is defined ambiguously it is not capable of distinguishing the Applicant’s Energy Drinks.The Hearing Officer agreed that the colours were not the same and this would prove fatal to the prospects of the application. Not only was the endorsement incorrect and, but it could not be altered as doing so would ‘substantially affect the identity’ of the trade mark (which is not allowable). The overall conclusion on this point was:

As such, the application was rejected pursuant to section 41(2) of the Trade Marks Act.

For completeness, the Hearing Officer also reviewed the evidence of use filed by the applicant in support of its application. The review of the evidence led to the conclusion that regardless of the ambiguous endorsement, the colour green is not registrable in respect of beverages, including energy drinks.

This conclusion was based on a number of factors, including that green is widely used by numerous competing beverage manufactures ‘for its descriptive significance or aesthetic appeal’ and that the applicant uses differing colours to identify variants of its own goods (which further emphasised the relatively descriptive significance of green).

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.