15 August 2018
Since the recognition of colour as a registrable trade mark in 1955, there have been a limited number of Australian cases dealing with the subject. For many brand owners, colour is important as consumers often associate colour with a particular product or service. However, to date, few brands have been able to successfully obtain trade mark registrations (and hence a monopoly) over a particular colour. The inability of BP to register the colour ‘green’ on its own as a trade mark for its service stations or for Telstra to obtain a trade mark registration for the colour known as ‘knockout yellow’ for its Yellow Pages, demonstrates the high bar that brand owners face with colour marks.
Corrs has previously acted in the registering the colour orange in relation to Veuve Cliquot champagne, and has also been involved in other colour related trade mark matters including for Cadbury relating to the colour purple.
The recent Frucor v Coca-Cola decision relating to the colour green for Frucor’s ‘V’ Energy drinks is another example of this. The case highlights the importance of getting the colour right - the first time round. We discuss what this case means for brand owners in Australia as the decision provides some useful guidance for an area of trade mark law left largely untouched by Australian cases.
The Federal Court recently upheld IP Australia’s decision in favour of Coca-Cola’s opposition to Frucor’s application to register its ‘V’ Green colour as a trade mark. The application was in relation to its ‘V’ Energy Drink product for energy drinks in class 32.
Coca-Cola opposed the application on the grounds that the mark was not capable of distinguishing the designated goods from the goods or services of another trader. Ultimately, Justice Yates refused the mark on the basis that Frucor’s application for the ‘V’ Green colour was “fatally flawed”. In any event, the Court also held that even if the colour application had been filed properly, Frucor had used the colour in a descriptive fashion, rather than in a distinguishing manner, and that ‘V’ Green had not functioned as a trade mark when assessed in its proper context and setting.
The first difficulty Frucor had in registering the mark was the ambiguity in the application. To register its colour trade mark, Frucor submitted a swatch of the colour green it intended to register, along with a short description of the mark which described the colour as Pantone 376C. The swatch Frucor electronically submitted with IP Australia was a coloured scanned image of the colour swatch submitted for Frucor’s New Zealand application. Unfortunately for Frucor, the green colour of the swatch submitted was substantially different and a much darker shade of green to Pantone 376C.
Frucor argued that the ambiguity between the swatch colour and the colour of Pantone 376C can be resolved by relying on the reference to the Pantone colour in the mark’s written description. Justice Yates disagreed and held that “[a] person inspecting the Register is entitled to act on the assumption that the trade mark applicant’s own depiction of colour in the representation accompanying the application is accurate”.
Thus, as part of its argument, Frucor sought to rely on the amendment provisions under the Act which allow for amendments where a “clerical error” or “obvious mistake” has occurred. Citing a previous case, His Honour noted that where there is an obvious mistake, “it is the mistake which must be obvious and not the fact that it has been made… both the fact of the mistake and the correction necessary must be clear to the reader’s mind, and it is not enough if he merely appreciates the presence of a mistake…”.
Rejecting Frucor’s argument, Justice Yates considered that the trade mark application could not be amended as it would not be clear to a person who inspected the Register whether the error was in the description of the colour as Pantone 376C or in the swatch attached. His Honour commented that this is why the delegate accepted that Frucor’s application was “fatally flawed”.
Helpfully, the decision provides some guidance on how the case would have been decided even if the application could have been amended and hence whether Pantone 376C was capable of distinguishing the designated goods (‘V’ Energy Drinks) from the goods of another person.
Frucor made a number of arguments, including that:
Ultimately, while Yates J found that Frucor’s use of ‘V’ Green was substantial, consistent and conspicuous, His Honour was not persuaded that it functioned as a trade mark in the proper context of the use.
 Frucor Beverages Limited v The Coca-Cola Company  FCA 993
 Trade Marks Regulations 1995 (Cth) reg 4.2(1)(b)
 Trade Marks Regulations 1995 (Cth) reg 4.3(7)
 The Pantone Matching System allows a person to match and reproduce a colour using a standardised reference system, to ensure that a colour matches another without the need for a direct comparison.
 General Tire & Rubber Company (Frost’s) Patent  RPC 271
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