Soft-drink giants await ruling in trade mark war over colour green
Intellectual Property June 28, 2018 11:45 pm By Christine Caulfield | Melbourne

A ruling in a trademark battle between two beverage giants over a shade of green is set to be handed down next week, and the decision could provide fresh guidance on what a company needs to do to successfully claim a colour as a ‘badge of origin’.

Federal Court Justice David Yates will deliver his judgement on Monday, a year after hearing arguments in an appeal by the maker of V Energy Drink to an IP Australia decision, which rejected its application to trade mark the Pantone 376c green of its labels and cans.

Coca-Cola successfully challenged Frucor Beverages’ registration of the trade mark, contending that the colour green was not distinctive of the V Energy line of drinks.

The soft drink giant, which marketed its own rival energy drink, Mother, with a variant called Green Storm, argued that 30 per cent of V Energy varieties did not have green packaging.

Coca-Cola also argued that the sample green swatch attached to Frucor’s 2012 trade mark application was not even Pantone 376c, but a different shade of green, Pantone 7727c. This was a fatal flaw in Frucor’s application, it argued.

Frucor contended the colour green of its V Energy packaging had been used extensively and continuously in Australia since 1999, and that the drink had a 38 percent share of the energy drink market in the Australia.

In upholding Coca-Cola’s opposition to the mark in August 2016, a delegate of the Registrar of Trade Marks agreed the mark was not capable of distinguishing V Energy.

The delegate, Michael Kirov, noted that other beverage makers, in addition to Coca-Cola, used green on packaging of drinks, and that the colour would be used for design purposes or serve “to indicate some characteristic of the drink, such as flavour or ingredient that is green”.

“The colour green (Pantone 376c) has no inherent ability to distinguish the [Applicant’s Energy Drinks] from the energy drinks or beverages of other persons as it is, and was before the [Filing Date], industry practice to use a range of different colours for energy drinks and other beverages for their packaging and their labels, including different shades of green,” he said.

The fact that some flavors of V Energy were not predominantly packaged in green was not a factor weighing against Frucor, as Coca-Cola had argued.

But Kirov found that Frucor has not established that when it sold energy drinks in green coloured packages or with green coloured labels, which also include the trade mark “V”, that it was the colour, and not the “V” that “exclusively indicates trade origin”.

“I accept that the colour green may be a ‘key component [of] the get-up of V energy drinks,’ (albeit only of around 70% of them), and that it may make the predominantly green version of the product ‘recognizable’ in some respects. However, I do not think that is enough to conclude that consumers would perceive the colour alone is being used as a badge of origin which distinguishes the Applicant’s Energy Drinks from the similar goods of others,” the delegate said.

The delegate also found that the “discrepancy in colour” between Pantone 376c and the green swatch on Frucor’s trade mark application substantially affected the identity of the claimed mark.

On appeal, Coca-Cola told Judge Yates the use of the “prominent and distinctive ‘V’ logo” on Frucor’s energy drink cans and packaging strongly suggested that the colour green alone did not function as a badge of origin, “if indeed it functions as a badge of origin at all”.

“Indeed, given that the cans of variant flavours lemon, orange and sugar free V made very minimal use of the colour green but display the prominent “’V’ logo, it is far more likely that the ‘V’ logo functions as the badge of origin,” the company said.

Frucor argued to the Federal Court that the delegate had erred in finding that the colour did not distinguish V Energy drinks. The company told Judge Yates that it used Pantone 376c as a trade mark on its energy drink’s packaging and labels before June 2012, the application date for the mark, and that the colour in fact distinguished energy drinks as Frucor’s as at that date.

Frucor is represented on appeal by Clayton Utz. Coca-Cola is represented by Phillips Ormonde Fitzpatrick Lawyers.

The case is Frucor Beverages Ltd v The Coca-Cola Company 

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Christine Caulfield

Christine Caulfield has been a journalist for 18 years. She was most recently the Co-Managing Editor at US legal news publication Law360. Prior to that she worked as the County Court reporter for The Herald Sun. She is Co-Founder and Editor of Lawyerly.