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The Mother of all trade mark battles

16 June 2020 - By Kate Duckworth

Under threat of trade mark infringement proceedings, Energy Beverages LLC has unsuccessfully challenged Frucor Suntory’s trade mark registration for the colour green: Frucor Suntory New Zealand Limited v Energy Beverages LLC [2020] NZIPOTM 5 and 6.

Energy Beverages interest in the colour green stems from its MOTHER energy drink that comes in a “KICKED APPLE” apple flavour:

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Frucor Suntory has for many years been a market leader in the energy drink market with its V product:

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Grounds for challenge

Energy Beverage’s challenge has two main pillars.

The first is that Frucor has not used the colour green trade mark.  Trade mark registrations can be removed from the register if they are not used within certain timeframes.  Case law is very strict on the trade mark being used in the same format as the trade mark is registered in.  The colour that formed the basis of the trade mark application was not the same as the colour used on the V drink cans, so the argument is therefore that Frucor had not used the trade mark as registered mark could be removed from the register and could not sue Energy Beverages for trade mark infringement.

The colour used on V cans is Pantone 376C:

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Whereas the colour on Frucor’s trade mark application looks like this:

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The second is that the trade mark for the colour green was not registrable in the first place because the trade mark application was described as being for Pantone 376C when it is “applied as the predominant colour” and in particular the use of the word “predominant” lacked certainty.

First ground: has Frucor used the colour green as registered?

Dealing with the first ground, whether Frucor has used the trade mark as registered, both parties submitted evidence from colour, print and packaging experts as well as evidence of what was submitted with the trade mark application.

Part of Energy Beverage’s argument was that the Pantone 376C was different when used on cans, as opposed to other substrates because the C in 376C refers to the paper type, being a coated or gloss paper. Energy Beverages brought evidence to the effect that Pantone colours cannot be reliably reproduced on aluminium cans.

The discrepancy between the colour sample and the written description of the trade mark was relatively easily resolved in that the written description “Pantone 376C” and not the colour sample is determinative.

Frucor could easily show that it has used a colour that has the appearance of Pantone 376C for its cans and in terms of any collateral printed on paper, cardboard and the like, this was definitely Pantone 376C. Ultimately, the matter was one of what a consumer would see when viewing the trade mark, not a colour expert and Frucor only had to show that it had used a colour that had the appearance of Pantone 376C.

The colour description lacks certainty

The second pillar of Energy Beverage’s challenge, that the written description of the trade mark lacked certainty, Energy Beverages was out of time.  Trade mark registrations gain conclusive validity for certain aspects seven years after registration and the registration was beyond that time frame.

The Assistant Commissioner of Trade Marks who heard the case, considered this ground and found that “predominant” in the context of a trade mark will generally be understood to mean “the colour that catches the attention of consumers as being the main or most memorable colour used”. Frucor easily met this standard.

Energy Beverages also claimed that the granting of Frucor’s trade mark registration was contrary to equity.  That is, by lacking clarity in relation to the description of the colour, the registration is unfair and therefore inequitable. Given the Assistant Commissioner’s finding about the written description being adequate, the equity argument also failed.

Stamina

Under threat of infringement proceedings, there will no doubt be an appeal by Energy Beverages.  It might need some of its energy drinks for the stamina.

Kate Duckworth kate@kateduckworth.co.nz is an IP lawyer at her own firm in Wellington, Kate Duckworth Intellectual Property Ltd.

Last updated on the 17th June 2020