Grove Fruit Juices Pty Ltd - [2011] ATMO 1

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 1294692(32) - WHITE COLOURED BOTTLE- in the name of Grove Fruit Juice Pty Ltd.

Delegate:

Iain Thompson

Representation:

Applicant: Cullens Patent & Trade Mark Attorneys

Decision:

2011 ATMO 01

Ex parte decision, functionality of colour, colour white needed by other traders, trade mark lacks any inherent adaption to distinguish, evidence does not show that the trade mark in fact distinguished the goods at the priority date.

Trade mark rejected.

Background

In this matter Grove Fruit Juice Pty Ltd (‘the applicant’) has applied to register a trade mark current details of which are:

Application No: 1294692

Priority Date: 15 April 2009 (‘the relevant date’)

Goods: Fruit juices (‘the goods’)

Trade Mark: The trade mark consists of the WHITE COLOUR of the bottle in which the goods are sold: the shape of the bottle does not form part of the trade mark.
(‘the trade mark’)

An examiner cited grounds for rejection of the trade mark in terms of subsection 41(6) of the Trade Marks Act 1995 (‘the Act’). The applicant requested to be heard.
As a delegate of the Registrar of Trade Marks, I heard the submissions of the applicant made by Regan Gourley and Veronica Gourgaud of Cullens, Patent & Trade Mark Attorneys at a hearing in Brisbane on 7 September 2010. Mr Brett Attridge, National Business Manager - Route & Retail, of the applicant was also present at the hearing.
Purists and pedants will observe that WHITE is not a colour, but the absence of any colour. For the sake of simplicity and clarity in these reasons, I acknowledge this quibble but will call WHITE, in the context of this decision, a colour.

History

I adapt the words of the applicant concerning the history of this matter:
The first examination report was issued on 1 May 2009 in which the examiner cited grounds for rejection under Section 41 of the Act on the basis that the trade mark, that is the colour WHITE applied to plastic bottles in which the goods are sold, was “likely to be needed by other traders” in relation to the goods. The examiner also considered that the colour is a “functional and decorative feature of the goods” and that “other traders should be able to use bottles coloured white” in connection with similar goods. The examiner considered that the objection might be addressed by lodging evidence as required under subsection 41(6).
In particular, the examiner contended that “the colour white is functional because it is the colour in which plastic of the type used to produce bottles is commonly produced, often to assist retention of vitamin C levels in juices. It is also decorative, as white is frequently used to decorate juice bottles, giving them a frosted appearance to make the bottle look like it is cooled”.
Submissions in response to the examination report dated 1 May 2009 were filed on 19 November 2009, including evidence of use of the trade mark since 1996, to establish that the trade mark is capable of distinguishing the designated goods from the goods of other persons, and addressing the issues concerning the alleged functionality and decorativeness of the trade mark.
The evidence comprised the totality of evidence lodged on this application and the applicant’s earlier application no. 1159458 for the WHITE Colour Mark, including the Statutory Declaration of Brett Attridge, National Business Manager - Route & Retail of the applicant, dated 26 November 2008, and accompanying exhibits (“Declaration 1”) and the supplementary statutory declaration of Brett Attridge, dated 28 October 2009, and accompanying exhibits (“Declaration 2”), lodged on this application.
However, the examiner rejected the submissions and a second examination report was issued on 18 January 2010, in which the examiner maintained the objection under subsection 41(6), on the basis that he was not satisfied that the “colour trade mark is capable of distinguishing (the applicant’s) goods from those of another trader”. In his report, the examiner stated that the applicant “would need to demonstrate that the WHITE COLOUR on its own has come to be recognised as a trade mark by the buying public and by members of the trade”. In addition, the examiner stated that he considered the “dominant distinguishing element” in the trade mark was the word GROVE plus device used by the applicant on the white bottles.
While the examiner acknowledged the continuous use of the trade mark for fourteen years, the substantial sales and significant advertising of the trade mark, and the customer/market surveys, the examiner did not consider that these “clearly demonstrate that the ‘white’ coloured bottles are recognised by a majority of people as belonging to a particular trader”. The examiner also reiterated, on the question of functionality of the colour white, that “white is a colour in which plastics (of the type used for juice bottles) are commonly produced” and that this “assists retention of vitamin levels in the juices themselves”. The examiner added that “It (white) is a standard colour for the goods and one that is attractive to the average consumer”. The examiner rejected the application on the basis that he considered “the evidence supplied shows that it is the combination of the labels carrying the word ‘GROVE plus device’ with the WHITE COLOUR bottle that distinguishes the applicant’s goods”.
The examiner also considered that the endorsement filed with this application does not meet the requirements of either Section 40 of the Trade Marks Act or Regulation 4.3(7).

Evidence

The evidence comprises the statutory declarations mentioned above made by Mr Brett Attridge, National Business Manager - Route & Retail, of the applicant. Discussion of the declarations is complicated by the fact that Mr Attridge includes in his first declaration a blanket claim for confidentiality for the entire declaration. If I were to take the terms of the claim for confidentiality seriously, it would arguably end discussion of the bulk of the evidence immediately. Obviously, this claim of confidentiality also has ramifications in terms of any possible section 52 opposition of the application under section 62 of the Act by another trader – that section provides:
62Application etc. defective etc.
The registration of a trade mark may be opposed on any of the following grounds:
(a)that the application, or a document filed in support of the application, was amended contrary to this Act;
(b)that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
Note:For file see section 6.
If I were to accept the application without fully discussing the evidence which led to the decision to accept, and hence clarify my reasons for accepting the trade mark, it would potentially deprive another trader of a ground of opposition on the basis that some of the evidence or representations that led to my decision to accept were false in material particulars. Therefore, in the context of a decision to accept the application, not fully discussing the evidence would be contrary to procedural fairness and natural justice.
It is not in either the applicant’s ultimate interests or those of other traders that I take the applicant’s claim for confidentiality literally. If the confidentiality request is taken literally, I am unable to discuss and consider the evidence and give reasons for my decision and must hence refuse to register the trade mark. Accordingly, I will discuss those parts of the declaration which are relevant to any decision I might make and take notice of (and be circumspect in relation to) any material which might be of a sensitive commercial nature.
Relevantly, the applicant’s first use of the trade mark was in 1996. The applicant claims to currently be the largest privately owned fruit juice processor in Queensland. The applicant's business was established in 1969 in Brisbane as a specialist home delivery fruit juice business. In 1983 that company was bought by the present owner, with the vision of expanding the company through innovation, quality and service. Since that time, the applicant has grown from a one employee business, producing 3,000 litres of fruit juice per week, to a processing and distribution network employing over 70 staff and processing over 300,000 litres of juice per week.
Mr Attridge states that the applicant’s reasons for adopting the colour white for its bottles and starting its use of the trade mark were:
·Creating the 'point of difference' which would set the applicant's products above competitor's products
·    Presenting an image of purity and freshness
·    Making the applicant's product highly visible
·    Maximising brand/pack recall
·Featuring a colour not customarily chosen as food packaging, especially for fruit juices. (This was a particular challenge as white bottles have traditionally been identified with packaging use for cleaning products)
·Masking the sediment which settles in the bottle (as a consequence of the juice not being pasteurised). (However, any strong colour, including black, would have achieved this aim).
The following products are sold by the applicant in its white coloured bottles:
•         Orange 250 ml
•         Orange 500 ml
•         Orange 1 litre
•         Orange 2 litres
•         Orange 3 litres
•         Orange Pulp Free 2 litre
•         Mandarin 500 ml
•         Mandarin 1 litre
•         Mandarin 2 litres
•         Mandarin & Mango 500 ml
•         Mandarin & Mango 1 litre
•         Mandarin & Mango 2 litres
•         Orange & Apple 2 litres
•         Ruby Red Grapefruit 1 litre
•         Juice of the Tropics 500 ml
Mr Attridge, in his first declaration, states:
The WHITE, Colour [Trade] Mark is, or has been, used as a trade mark by the applicant in numerous ways, including the following:
•         containers
•         necktags
•         brochures
•         handouts
•         point-of-sale material and displays
•         the Product Guide
•         radio and television advertising
•         stationery
•         message on 'hold'
•         billboards / mobile billboards / posters
•         company vehicles
•         sponsored racing vehicles
•         sponsored sports events
•         trade shows and exhibitions
•         competitions
•         the applicant's website
I observe that the above occurrences of use are, with the possible exception of the material on the applicant’s website, uses of the white coloured plastic bottles with other labeling on them as in paragraph 22, below, and bear no obvious claim to a trade mark status for the white coloured plastic bottles.
An example of these uses appears on the applicant’s website and I reproduce this below:

The above container appears interchangeably[1] on the home page with the one appearing below:

[1] On the first view of the applicant’s ‘home page’ one sees the container at paragraph 22, on the next view, one sees the container at paragraph 23, then the views alternate with each return visit to the home page.

The current version of the applicant’s website, under the heading ‘HOW COME THE WHITE BOTTLE’ provides the following (which is found by following links from the ‘home page’):
UV protected goodness
Grove 'Juice of Orange' is full of real Australian grown goodness. Our famous white bottle protects your juice from vitamin-sapping UV light, in the same way the skin of an orange does.
Natural energy and goodness
'Juice of Orange' is squeezed daily, so it doesn’t need to be “cooked” via a pasteurising process. All the valuable enzymes and natural vitamins, that your body loves, are still there and kept safe.
Sorry, but we just can’t concentrate
Our Juice in the white bottle is always squeezed from fresh oranges. It’s never, ever, ever, ever made from a concentrate.
Squeezed in all the right places
Our oranges are squeezed from the outside in, so there’s no bitter skin taste. And...they're squeezed in Queensland!
Juice with heart
Endorsed by the National heart Foundation (We couldn’t have said it better ourselves).
Juice without junk
No added sugar. No added flavour. No artificial colours. No added water. No added concentrate.
Apart from the statement that the white coloured bottle is famous, there is no claim for trade mark status of the white coloured bottle on the applicant’s website. Only the first two of the claims, above, are relevant to the bottle being white.
Mr Attridge appends the results of two surveys concerning the white coloured bottle to his first declaration. I think that it is fair to say that these show that the white coloured bottle is primarily most recognized in Queensland. One of the surveys reported that:
When asked about the 'white bottle', more respondents than not, agreed that the brand in the 'white bottle' was :
•         easier than other brands to recognise;
•         more likely to be home squeezed;
•         clearly identifiable as a Grove product;
•         an indication that the juice is pure and fresh;
•         more likely to be unprocessed; and
•         that it encouraged people to try it.
Since the survey results are valuable commercial information and have no bearing on my decision other than my prior observations, I will leave my discussion of them there.
Mr Attridge further declares:
Turning to promotion of the WHITE Colour Mark, the applicant has conducted promotions of the Mark by various means, including:
•         Supermarket displays (see Exhibit BA-5)
•         In-store sampling (see Exhibit BA-13)
•         Shopping centre sampling (see Exhibit BA-11)
•         Outdoor sampling (see Exhibit BA-13)
•         Product brochures (see Exhibit BA-4)
•         Trucks (12) (see Exhibit BA-15)
•         Sales reps' cars (3 wrapped Smart cars, 4 wrapped VW Caddy vans) (see Exhibit BA-15)
•         Motor racing (see Exhibit BA-11)
•         Race the clones (3) (see Exhibit BA-11)
•         Racing cars (see Exhibit BA-11)
•         Boat racing (see Exhibit BA-11)
•         Billboard campaigns (see Exhibit BA-3)
•         Railway station campaigns (see Exhibit BA-10)
•         Radio advertising (see Exhibit BA-14)
•         Television advertising (see Exhibit BA-11)
•         Consumer competitions (see Exhibit BA-11)
•         Exhibitions and trade fairs (see Exhibit BA-13)
•         Website (see Exhibit BA-9)
Largely, the above promotions and advertising appears to involve the exposure of the white coloured bottle with the applicant’s labeling on it which appears at paragraph 22 of these reasons. There appears to be no promotion of the white coloured bottle, solus, in relation to the goods.
The applicant has also advertised its juices sold in the white coloured bottles on radio – Mr Attridge says:
During 2007, the applicant conducted a major radio advertising campaign. Annexed hereto and labelled "Exhibit BA-14" is a CD of the three advertisements: the first spoken by a ‘farmer’; the second spoken by a ‘female shopper’ and the third promoting a consumer competition conducted through FM radio station River 94.9 […] All of these advertisements involved very heavyweight ‘all play’ on the WHITE Colour Mark. Following are extracts from the scripts:
Farmer: "You know that juice in the WHITE bottle ..."
Female shopper: "It's the one in the WHITE bottle ..."
Competition promo: "Home of the famous orange juice in the WHITE bottle".
It is fair to observe that the goods are also otherwise identified in the advertisements as being GROVE fruit juices.
The applicant wholesales in the region of $5 million a year of juices in the white container. It spends in the region of one third of a million a year on advertising goods sold in the white container.

Framework

Section 17 provides the definition of a trade mark:
17What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note:For sign see section 6.
The word ‘sign’ used with section 17 is defined within section 6 of the Act in the following way:
sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
The examiner’s stated grounds for rejection originated within sections 31 and 41 of the Act which respectively provide:
31Registrar to examine, and report on, application
The Registrar must, in accordance with the regulations, examine and report on:
(a)whether the application has been made in accordance with this Act; and
(b)whether there are grounds under this Act for rejecting it.
Note:For this Act see section 6.
41Trade mark not distinguishing applicant’s goods or services
(1)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1:For applicant and predecessor in title see section 6.
Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note:For goods of a person and services of a person see section 6.
(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a)the Registrar is to consider whether, because of the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.
Note 1:For goods of a person and services of a person see section 6.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

This matter has arisen for me to decide as a delegate of the Registrar of Trade marks because of the stated grounds for rejection in terms of section 41 of the Act and because of the provisions of section 33 of the Act which allows:
33Application accepted or rejected
(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it.
Note:For this Act see section 6.
(2)The Registrar may accept the application subject to conditions or limitations.
Note:For limitations see section 6.
(3)If the Registrar is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it;
the Registrar must reject the application.
Note:For this Act see section 6.
(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note:For applicant see section 6.

Discussion

Section 41 of the Act sets out a scheme for the assessment of the inherent fitness, or inherent adaptation of a trade mark to distinguish the goods or services of one person from the similar goods or services of another person. The scheme and how it operates were discussed at some length by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440 where she said:
Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (“the designated goods or services”). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or
(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.
If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.
If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).
If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).
Branson J, in discussing how inherent adaptation to distinguish is to be assessed, also cited Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 (‘Clark’) with approval. In that case Kitto J said:
"[T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it."
The principal cases concerning assessment of the inherent adaptation to distinguish within colour trade marks are Philmac Pty Limited v The Registrar of Trade Marks [2002] FCA 1551, (2002) 126 FCR 525 (‘Philmac’); and, Woolworths Limited v BP plc [2006] FCAFC 132, (‘BP Green’).
In Philmac, at 51, Mansfield J addressed the application of the test in Clark to colour trade marks. He said:
In the present case, the test in Clark Equipment demands consideration of the likelihood that other traders actuated only by proper motives might think of the sign applied for, namely the colour terracotta, and want to use it in connection with similar goods in a manner which would infringe a registered mark granted in respect of it. The concept of a properly motivated competing trader was discussed by Buckley J in Blue Paraffin Trade Mark [1977] RPC 473 at 500:
"Speaking for myself, I should describe the duty of the Registrar as this: that examining the facts he has also to survey the possible confusions or difficulties and the possible impairment of a right of innocent traders to do that which apart from the grant of the mark would be their natural mode of conducting their business."
There are, in my view three obvious respects in which the right referred to in that passage might be impaired by the registration of a mark of the type contemplated in the present case.
First, a trader might legitimately choose a colour to apply to goods to denote a meaning that that colour might ordinarily possess. For example, the concepts of hot, cold, environmentalism, danger, stop, go, communism, mourning and femininity are universally conveyed as colours. Accordingly, an application for the colour mark red applied to taps might fail to satisfy the test in Clark Equipment because the registration of such a mark would impair the right of other traders in taps from legitimately using that colour to convey the meaning it ordinarily possesses. The application would, in my judgment, be analogous to an application for registration of a purely descriptive word and the mark applied for would therefore not be inherently adapted to distinguish. That conclusion is consistent with international jurisprudence in respect of the registration of trade marks comprising colour applied to goods or parts of goods. The colour blue in relation to fertiliser pellets was precluded from trade mark protection by the United States Supreme Court because it had the utilitarian function of identifying the presence of nitrogen, and was therefore ornamentally functional: Nor-Am Chem. Co. v OM Scott & Sons Co, 44 USPQ 2d (BNA) 1316 at 1320; KL Davidson, "Supreme Court says Yes to Color, Pure and Simple: Qualitex Co v Jacobson Products" 1996 21 Dayton L Rev 855 at 861.
Secondly, a trader might legitimately choose a colour for its practical utility. That is, the colour may be a feature of a product that serves to improve the functionality or durability of the product. The function of visibility is, for example, served by the colour yellow; heat absorption by the colour black; light reflection by the colour white; military camouflage by a combination of khaki, brown and green. In the present case Philmac 's evidence was that the colour black was ordinarily applied to polymer piping to serve the function of protecting the product from degradation through exposure to ultraviolet light. The shape mark cases properly indicate a reluctance to permit, by virtue of a trade mark registration, a permanent monopoly of matters of engineering design: Kenman per French J at [45]; Koninklijke Philips Electronics NV v Remington Products Australia Ltd [1999] FCA 816; (1999) 91 FCR 167; Philips Electronics NV v Remington Consumer Products (1997) 40 IPR 279 per Jacob J; British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281. In my view there is no reason why the functionality principles applied to the registration of shape marks should not also apply to the consideration of the application of colour marks.
Thirdly, a product may be produced in a particular colour being the naturally occurring result of the manufacturing process. Terracotta is a case in point. Were the applicant to apply for the registration of the colour terracotta to terracotta roof tiles or garden pots, the effect of granting the registration would be to force on other traders a method of manufacture that would involve a departure from the "natural mode" of conducting the business of manufacturing those terracotta products.
In BP Green, the Court observed at paragraph 80:
Woolworths submitted that, during the relevant period, the letters " BP " and the logo with the letters "BP" surrounded by the yellow outline of a shield, had each been used as a trade mark, but not the colour green. It also submitted that, even if some of BP’s advertisements were to be regarded as using the colour green as a trade mark, BP had not established the distinctiveness called for by s 41(6) as at the relevant filing dates.
One of the difficulties with the approach of the primary judge is that one does not find any analysis expressed in the terms of s 41(6), although his Honour referred to the statutory questions posed by s 41(6) early in his reasons. The primary judge proceeded to analyse the evidence and draw his conclusions by reference to the get-up of the service stations: at [62]-[65]. Apart from those conclusions his Honour made no express finding about what had been used as a trade mark. Certainly, one can recognise the discussion of what may be a very similar issue in the United States of disaggregating get-up for the purposes of individual trade mark registration. However, s 41(6) calls for a more precise analysis. In Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551; (2002) 126 FCR 525 at 548 [71], Mansfield J said that for the purposes of applying s 41(6) to a colour mark two issues needed to be addressed. The first is whether the use of the colour in the manner described in the application has, prior to the date of the application, constituted use of the colour as a trade mark. The second issue is whether the trade mark applied for does in fact distinguish the applicant’s products, having regard to evidence concerning the actual use of the colour as a trade mark. We agree with that approach. Thus, s 41(6) requires specific consideration of the extent to which BP has used each of the marks applied for as a trade mark before the date of filing and whether that use was sufficient to distinguish the designated goods and services as being those of BP: Blount v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50 at 60.
In our view, there are obvious dangers in approaching these issues by reference to the get-up of the service stations. The foremost danger, perhaps, is that the inquiry will be diverted into an examination of the distinctiveness of the colour green alone, and away from the questions posed by s 41(6). That danger must be heightened where the evidence clearly showed that BP had used the colour green in ways, and as part of other trade marks, that did not correspond with the trade marks that were the subject of the applications in suit. For the purpose of s 41(6), the focus of the inquiry should be the use of the marks applied for, rather than use of colour as part of the get-up or packaging of goods generally: cf British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 302. Woolworths submitted that the primary judge was diverted in this way, and as a result incorrectly concluded that the trade marks the subject of the applications had been used by BP either at all or to such an extent that they did distinguish BP’s goods and services. We agree with this submission.
Accordingly, in the assessment of the inherent adaptation to distinguish of the colour white applied to bottles of fruit juice in the application, I am required to consider:
1.    Whether another trader in fruit juices might legitimately choose the colour white to apply to fruit juices to denote a meaning that that colour might ordinarily possess.
2.    If a trader in fruit juices might legitimately choose the colour white for its practical utility: if the colour white may be a feature of a product that serves to improve the functionality or durability of the product.
3.    Whether the white colour of the bottles of fruit juice is the naturally occurring result of the manufacturing process.
I also note that the terms of the endorsement on the application, above, make it clear that the colour is to be applied to any shape of bottle and that therefore, in terms of BP Green, above, I am to ignore the bottle or packaging.
In relation to point one, above, the applicant states that it chose the colour white to indicate the purity of the goods. Other traders who wish to extol the purity of their fresh fruit juices would also naturally alight on the colour white.
In relation to point two, above, the applicant’s website states: “Our famous white bottle protects your juice from vitamin-sapping UV light, in the same way the skin of an orange does”. At the hearing, the applicant submitted that there is no requirement to use the colour white on an opaque fruit juice bottle to achieve this effect; however, I observe that vitamins which are sold through supermarkets and health food stores are (if sold in plastic containers) usually sold in containers which are coloured white. Other traders who wish to show that the vitamins in their fruit juices are similarly protected should naturally alight upon the colour white to do this.
The applicant also states that the white coloured bottle masks the presence of sediment in the bottles which might be off-putting to consumers.
In relation to the third question, above, the white colour of the applicant’s fruit juice bottle is not a natural effect from the normal manufacture of plastic fruit juice bottles. Indeed, the applicant has pointed out that the white coloured plastic bottles are more expensive to manufacture than the translucent ones in which fruit juices are normally sold. However, once any trader has decided to sell its fruit juices in opaque plastic bottles, some additional expense is required, whatever the colour.
I conclude that the applicant’s trade mark lacks any inherent adaptation to distinguish since it is the trade mark is one which other traders would need to use to indicate the purity of their fruit juices and to protect them from the vitamin destroying effects of UV rays.
The ground for rejection of this trade mark therefore lies under subsection 41(6) of the Act.
Subsection 41(6) provides that if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons.
The evidence establishes that the applicant has used the white coloured bottle invariably with a label which carries its GROVE trade mark and a description of the type of juice that the bottle contains. This is the representation which appears at paragraph 22 of these reasons. The advertising and promotion of the goods is invariably by reference to the GROVE trade mark on the white bottle with the white bottle expressly mentioned or drawn attention to in three radio advertisements (apparently all in Brisbane) which also mention the GROVE trade mark.
The major portion of the sales and promotion of the goods appears to be in Queensland, as I would infer to be the bulk of the sales.
In view of the lack of inherent adaptation to distinguish in the trade mark, it has a lot of work to do to gain any acquired distinctiveness – that is to stand on its own having gained a secondary meaning as denoting only the applicant’s goods without any assistance from the other material on the packaging in which it is sold. The evidence does not demonstrate that the trade mark has gained this secondary meaning.
I do not consider that, on this basis, the applicant has shown that its white coloured bottle trade mark does distinguish its goods or, more relevantly, did distinguish those goods at the priority date. Sales and advertising of the goods in the white coloured bottle outside Queensland appear to be limited and it is, in any event, not safe to conclude that sales and advertising figures per se indicate that a trade mark has become distinctive in fact: British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281.
Accordingly, in terms of subsection 41(6)(b) the applicant’s trade mark is taken not to be capable of distinguishing the designated goods from the goods of other persons.
I reject application 1294692.

Iain Thompson

Hearing Officer

Trade Marks Hearings

6 January 2011