In the recent decision of Frucor Beverages Limited v The Coca-Cola Company, the Federal Court ruled that Frucor Beverages, the maker of V energy drinks, could not trade mark the green colour used to package its V products. The case highlights some of the difficulties of preparing trade mark applications and provides guidance on the issue of distinctiveness when registering trade marks.
Frucor filed a trade mark application in June 2012 for the colour Pantone 376C (“V Green”), a shade of green used to package its V energy drinks. However, the colour swatch attached to the application was not Pantone 376C but a different shade of green.
Frucor argued that IP Australia could rely on the description of the colour in its trade mark application, rather than the incorrect swatch, when deciding whether to grant a registration. Furthermore, Frucor argued that its use of V Green was that of a trade mark because it was used substantially, consistently and conspicuously in nearly all of their marketing and promotional material. Frucor also relied on consumer research and testimony from petrol station and convenience store owners to support the fact that consumers identify V Green with V energy drinks.
Coca-Cola disputed this, arguing that Frucor had not used V Green as a trade mark for the purposes of trade mark legislation.
The Federal Court rejected Frucor’s argument that the description contained in their trade mark application was a more reliable identifier than the swatch itself.
Under Regulation 4.3(7) of the Trade Mark Regulations 1995, any application for trade mark registration of an aspect of packaging (such as colour) must include a concise and accurate description of the trade mark. The Court found that this description had to be of the colour as represented and could not stand alone as an identifier of what the applicant wanted to register. Since the swatch was incorrect, Frucor’s registration, and the mark it wanted to trade mark, was ambiguous – this meant that registration could not be granted.
Although the attachment of the incorrect colour was found to be fatal to Frucor’s application, the Court also considered the requirements of registrable trade marks.
Section 41 of the Trade Marks Act 1995 requires that a mark be capable of distinguishing the applicant’s goods from the goods of others. In order to do so, it must be distinctive.
Although the Court did find Frucor’s use of V Green to be substantial, consistent and conspicuous, it did not find the colour to be distinctive of V energy drinks. This was because Frucor used other colours to package different varieties of V energy drinks (for example, red for V Berry). This meant that V green was only reminiscent of the original V drink and the colour simply denoted this core product – it did not distinguish it sufficiently. In light of this, the Court found that the trade marked V logo, rather than V Green, distinguished Frucor’s drinks. Even if Frucor had attached the correct swatch, their application would have failed because V Green did not distinguish V energy drinks.
This decision illustrates the high benchmark of distinctiveness required for trade mark registrations. A mark that is only descriptive of a product cannot be registered as a trade mark. The judgment also shows that evidence of association, even if based on consumer research, may not be enough to constitute use as a trade mark – courts will look to how a mark is used in a broader context and setting.
Following the decision, companies looking to protect the brand recognition contained in their packaging by registering a trade mark should carefully consider whether the mark is distinctive enough to distinguish their products.