In Australia, a single colour can be the subject of a trade mark application. However, a recent case heard before the Federal Court of Australia has demonstrated just how hard it is to secure a trade mark registration for a single colour, especially in respect of everyday consumer goods, such as food items and beverages.
In 2012, Frucor Beverages (“Frucor”), the manufacturer of energy drink V filed a trade mark application for the colour green (Pantone 376C). Frucor’s application was opposed by Coca-Cola Company (“Coca-Cola”), the manufacturer of energy drink Monster, on the basis that the colour green was not capable of distinguishing Frucor’s energy drinks and that Frucor’s application was defective (the wrong colour swatch had inadvertently been attached to the original application).
In the first instance before the Australian Registrar of Trade Marks, Coca-Cola successfully opposed the application arguing that the colour green was not capable of distinguishing Frucor’s energy drinks and that the colour green was already being used by V’s competitors in the marketplace, including the “Green Storm” variety of Coca-Cola’s Monster energy drink.
On appeal before the Federal Court of Australia, Frucor’s trade mark application was denied. The original error of filing the wrong colour swatch became Frucor’s undoing.
While Frucor tried to argue that because it had submitted a written description of the colour in the application as Pantone 376C, the erroneous swatch should be disregarded. However, this argument did not sit well with Justice David Yates finding that the application was “fatally flawed” because there was no way for a person viewing the Register to know whether the swatch attached to the application was correct.
Justice Yates also upheld the findings of the Australian Registrar of Trade Marks that the colour green was not capable of distinguishing Frucor’s energy drinks and that Frucor’s use of the colour green was essentially descriptive and did not function as a trade mark.
For many brand owners, colour can be an important element of a product and how it is recognised in the market. While many attempts have been made to protect a single colour as a trade mark in Australia, many have proven unsuccessful. Where there has been success, the efforts of brand owners to secure a registration for a colour trade mark often offer very little reward or protection in a practical sense.
Should you have any queries in relation to the protection of your intellectual property rights, please contact our Legal Practice Director, Catherine Sedgley.