Colour trade marks continue to be the subject of many lengthy disputes. For the past two years, Frucor Beverages, maker of V Energy drinks, and Coca-Cola have been fighting over the colour green. In June, the decision was handed down in favour of Coca-Cola. This case shows the difficulty of obtaining a colour trade mark. It also highlights the importance of getting your trade mark application right the first time.
This article explains how you can register a colour trade mark in light of the V Energy case.
The Pantone Mistake
In 2012, Frucor Beverages attempted to register a shade of green, Pantone 376C, in relation to its energy drink. Coca-Cola objected to the application on the basis Frucor’s application was “fatally flawed” by claiming the wrong shade of green. Frucor described its trade mark application as Pantone 376C. However, it mistakenly attached a swatch of Pantone 7727C, which is a much darker shade of green.
Furthermore, Coca-Cola argued that Pantone 376C did not distinguish the V brand. This is because it was already used in relation to other energy drinks, such as Coca-Cola’s Mother energy drink.
The Federal Court of Australia found that this swatch error was indeed a fatal flaw. Unfortunately, the trade mark application did not reflect the colour that Frucor was using in relation to its product. Frucor requested leave from the court to amend its trade mark application to attach the correct swatch. This was denied, as the court did not have jurisdiction to amend a trade mark application.
Regardless of the error made in Frucor’s application, the Federal Court agreed with Coca-Cola that the green colour was not capable of distinguishing the V Energy brand. As such, Frucor’s use of the colour was descriptive and therefore did not function as a badge of origin.
What is a Badge of Origin?
If a party challenges or opposes a trade mark, the applicant must demonstrate they have used the trade mark as a badge of origin. This means that, when seeing the trade mark, in isolation from any other branding, the applicant’s brand must be brought to mind by the average consumer.
Coca-Cola argued that Frucor’s ‘V’ logo served as its brand of origin and not the colour green in isolation. Frucor claimed that customers recognise ‘V green’ exclusively in relation to its energy drink and have done so for the last 20 years. However, the Federal Court sided with Coca-Cola. Frucor’s use of the colour was substantial and continuous. However, it had not built the reputation in the colour to function as a trade mark.
What Evidence Can Demonstrate a Badge of Origin?
Whether you have received an objection from IP Australia in relation to your trade mark application, or are on the bad end of a trade mark dispute, it is important to understand the type of evidence that will demonstrate your trade mark is a badge of origin.
If you are faced with having to prove your mark has been used as a trade mark, it is important to understand the type of evidence IP Australia will expect. Some evidence, such as advertising material and consumer surveys, can be more effective than others. However, the most important thing to show is evidence of your trade mark in isolation of anything else. In this case, Frucor had to prove that the colour green, separate from the V logo and all other branding, was a badge of origin.
Despite the overwhelming evidence Frucor supplied, the Federal Court found that the ‘V’ logo was a trade mark. Therefore, the green colour was merely descriptive and reminiscent of Frucor’s core product.
This should serve as a reminder to brand owners that substantial and consistent use of a trade mark is not enough if the trade mark has not built up a reputation to demonstrate its use as a badge of origin. The question you need to consider is whether the average consumer will see your trade mark, away from your products, services or other branding, and still associate it with your brand.
Requirements For a Colour Trade Mark
In addition to the evidence of use that IP Australia requires for a colour trade mark, the initial application must include a description of the trade mark. You should include the following in the description:
- a pictorial representation of the colour applied to the goods or packaging for which you will use it;
- an example of the colour being used in relation to each class under which the trade mark is applied; and
- if you claim a specific colour (such as Pantone 376C), the colour description must match the attached colour illustration.
For example: “The trade mark consists of the colour green, specifically identified as Pantone 376C, applied to the can of an energy drink as shown in the representations attached to the application form.”
Get it Right the First Time
Frucor’s mistake emphasises the importance of making sure you get your trade mark application right the first time. Once IP Australia assesses your application, you cannot make substantial amendments to it.
Other Aspects of the Application to Submit Correctly
In the same vein, make sure that when you first apply for your trade mark:
- the trade mark you apply is the one you will use to distinguish your brand;
- the owner of the trade mark is the correct entity; and
- you apply in relation to all of the relevant goods and services.
The V Energy case not only demonstrates how challenging it is to register a colour trade mark, but also the importance of correctly applying for a trade mark. If you need help registering your trade mark or defending your rights, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.
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