Wednesday, 29th August, 2018

Seeing red over colour? Frucor is, following a recent Australian decision not to allow its colour green to be registered as a trade mark

Not all trade marks are created equal. While it’s possible to apply to register a trade mark for a colour, a recent decision from the Federal Court of Australia has confirmed that the bar continues to be set very, very high.

Anything that is capable of being represented graphically can potentially function as a trade mark. Most of us are familiar with the traditional types of trade marks—words or logos that tell as at a glance who a product or service comes from.  Less common are non-traditional marks like sounds, smells, shapes and colours.

One of the more popular types of non-traditional trade marks is the colour mark. If a particular colour becomes synonymous with a company, its goods or services, it might be possible for that company to get a trade mark registration for the colour (or more accurately, a particular shade of a colour, applied to particular products or services). Cadbury has had success with a shade of purple for chocolate, and although not a traditional colour mark, Louboutin has obtained a trade mark registration for ‘a lacquered red sole on footwear’.

In the Federal Court case, Frucor Beverages Limited (Frucor) was trying secure a trade mark for the colour green. The ‘V’ energy drink has been Frucor’s flagship product and a staple of the New Zealand and Australian markets since the late 1990s.

In 2012, Frucor managed to secure a trade mark for its bright shade of green in New Zealand. In 2012, Frucor sought to secure an identical trade mark in Australia. The application was accepted by IP Australia, but opposed by a number of parties, including Coca-Cola.

In the opposition before IP Australia, Frucor lost and so it appealed to the Federal Court to overturn the earlier decision. The decision dealt with several issues, the most crucial being whether the colour green, in the way Frucor has used it on the V cans, was in fact used as a trade mark.

Rejecting Frucor’s evidence and arguments, the Federal Court said evidence of an association of a colour with a particular product does not mean that the product colour is functioning or has functioned as a trade mark. You need to have an understanding of how the colour was used in the context before the conclusion can be drawn.

Frucor provided evidence that consumers in the energy drink market recognise the colour green as being V. The evidence of use and consumer recognition was substantive, with one of the judges considering Frucor’s use was ’substantial, consistent and conspicuous’. But that wasn’t enough.

Frucor’s evidence failed to show that consumers had learned to exclusively associate the particular colour of green as identifying its ‘V’ brand of energy drink without relying on other elements of the product packaging, like the brand name and logo. This led the Court to find that although consumers see the colour green on energy drinks and know it comes from V, they don’t necessarily equate the colour green as a badge of origin.

The problem was that consumers associated the colour green with V, not with Frucor. The colour was a backdrop to the trade mark V, and not functioning as a badge of origin on its own, and telling the consumer that the drink came from Frucor.

Compounding this, Frucor didn’t always use its colour of green exclusively on its range of V drinks. Over the years, the V range had been broadened to introduce different flavours, and each new flavour variant was represented by a different colour. For example, the sugar-free version was silver, while the berry flavour was red. This led the Court to conclude that consumers were taught to link the colour green with the regular V flavour, reinforcing the link between colour and flavour rather than colour and the origin of the goods.                                                                     

This decision doesn’t have any impact on the underlying legal situation in Australia, but it does raise some useful points for brand owners in both New Zealand and Australia to remember if colour is an important part of your brand:

  • If you want to get a colour registered as a trade mark, make sure you use it as a trade mark.
  • Think about whether you are using the colour to indicate different products within a range brand, or the origin of your goods.