The Coca-Cola Company v Frucor Beverages Limited
[2016] ATMO 38
•22 June 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Coca-Cola Company to registration of trade mark application 1496541 (32) - The Colour GREEN - in the name of Frucor Beverages Limited
| Delegate: | Michael Kirov |
| Representation: | Opponent: Siobhán Ryan of Counsel, instructed by Greg Chambers of Phillips Ormonde Fitzpatrick Applicant: Stephen Burley SC, assisted by Catherine Bembrick of Counsel, instructed by Brian Elkington of Adams Pluck |
| Decision: | 2016 ATMO 38 Opposition under section 52 of the Trade Marks Act 1995: ss 41(2), 41(6) and 62(b) considered – s 62(b) not applicable - trade mark not capable of distinguishing Applicant’s goods notwithstanding evidence of use filed - registration refused. |
Background
This is an opposition brought by The Coca-Cola Company (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Frucor Beverages Limited (“the Applicant”):
Application Number: 1496541
Filing Date: 15 June 2012
Goods:Class 32: Energy drinks
Trade Mark: (“the Claimed Mark”)[1]
Endorsement: The mark consists of the colour GREEN (Pantone 376c), as shown in the representation attached to the application, applied as the predominant colour to the goods, their packaging or labels. Provisions of subsection 41(6) applied.
[1] It will be necessary either to view this decision on screen or to print a colour copy in order to appreciate various colour illustrations used throughout.
I will hereafter refer to the precise colour applied for as “376c GREEN” to distinguish it from other shades of green generally, which I will refer to simply as “the colour green”. It is useful here to record that Alistair Sayers, who is “Packaging Manager R&D” with the Applicant, explains in his declaration that:
5. The Pantone Matching System [“PMS”] is a colour coding or matching system, used for the accurate communication of colour. Under this system, the three digit number prefix indicates the colour and the letter suffix refers to the paper type on which the colour is printed. The suffix “C” represents coated or gloss paper; “M” [sic[2]] represents uncoated paper; and “M” represents matte or dull paper. The colour Pantone 376C refers to the particular shade of green 376, printed on coated or gloss paper. The colour “376” is the same colour as 376C, but with no reference to the paper on which it is printed.
[2] Possibly “U” was intended here; see Burke at [9].
Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 27 March 2014. The Opponent filed a Notice of Intention to Oppose on 26 May 2014, followed by a Statement of Grounds and Particulars (“SGP”) on 26 June 2014 raising opposition grounds corresponding to ss 41, 44 and 62(b) of the Act. The Applicant filed a Notice of Intention to Defend on 10 July 2014.
I heard the matter as a delegate of the Registrar of Trade Marks on 23 February 2016 in Canberra. Siobhán Ryan of Counsel, instructed by Greg Chambers of Phillips Ormonde Fitzpatrick, appeared for the Opponent. Ms Ryan’s oral submissions were supplemented by written submissions emailed to both the Applicant’s attorneys and me on 9 February in accordance with my directions. Stephen Burley SC, assisted by Catherine Bembrick of Counsel, instructed by Brian Elkington of Adams Pluck, appeared for the Applicant. Mr Burley’s oral submissions were supplemented by written submissions emailed to both the Opponent’s attorneys and me on 19 February, a day after the (extended) date directed and following a reminder from the Opponent’s attorneys. Also in attendance at the hearing, via video link from New Zealand, was Sooyun Lee of the Applicant’s attorneys in that country.
Grounds of Opposition, Onus and Standard of Proof
As mentioned, the SGP lists grounds corresponding to ss 41, 44 and 62(b) of the Act. However, in its written submissions filed two weeks before the matter was heard the Opponent confirmed it was only pressing the grounds based on ss 41 and 62(b). To succeed in its opposition the Opponent bears the onus of establishing at least one of these two grounds and I proceed on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[3] The relevant date for assessing the registrability of the Claimed Mark is the 15 June 2012 filing date of the application (“the Filing Date”). [4]
[3] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133] where the Full Federal Court affirmed Gyles J’s approach.
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, per Kitto J at 595.
The Evidence
For their evidence the parties rely on the following Statutory Declarations:
Evidence in Support
▪ Gregory Morris Chambers made 14 October 2014, with Exhibits GMC-1 to GMC-6 (“Chambers 1”)
▪ Romy Mueller made 14 October 2014, with Exhibits RM-1 to RM-38 (“Mueller 1”)
Evidence in Answer
▪ Garreth Chandler made 21 January 2015, with Exhibits GC-1 to GC-7 (“Chandler 1”)
▪ Christopher James Donald made 23 January 2015, with Attachments CJD1 to CJD3 (“Donald”)
▪ Susan Joan Peacock made 23 January 2015, with Attachment SJP1 (“Peacock”)
▪ Alistair Sayers made 23 January 2015, with Attachments AS1 to AS5 (“Sayers”)
▪ Peter John Lamb made 23 January 2015, with Attachments PL1 to PL5 (“Lamb 2”) [Attachment PL1 is a copy of a declaration made by Mr Lamb on 16 December 2013 with Annexures A to Z , the original of which was filed with IP Australia in 2013 in support of acceptance of the opposed application for registration (“Lamb 1”)]
Evidence in Reply
▪ Andrew Mark Turner made 8 April 2015, with Exhibits AT-1 and AT-2 (“Turner”)
▪ Romy Mueller made 9 April 2015, with Exhibits RM-39 to RM-46 (“Mueller 2”)
▪ Gary Patrick Burke made 9 April 2015, with Exhibits GB-1 to GB-4 (“Burke”)
▪ Gregory Morris Chambers made 10 April 2015, with Exhibits GMC-7 to GMC-9 (“Chambers 2”)
Further Evidence in Reply
▪ Garreth Chandler made 8 September 2015, with Exhibit GC-9 and Exhibits “GC-4 Revised” and “GC-7 Revised”, being amended versions of Exhibits GC-4 and GC-7 to Chandler 1 (“Chandler 2”)
I note that following a request from IP Australia the Applicant’s attorneys filed written submissions on 17 November 2015 in support of the admissibility of Chandler 2 pursuant to reg. 21.19 of the Trade Marks Regulations 1995 (“the Regulations”). IP Australia responded that the appointed Hearing Officer would “consider whether or not there [was] a compelling case to allow the material into the proceedings, and if appropriate, [would] give the Opponent an opportunity to make representations in the matter.” I dealt with this at the commencement of the hearing of the opposition itself and, in view of the declaration’s content and with the Opponent happy to allow its admission, confirmed I would allow it. Ms Ryan confirmed that the Opponent did not want to file any further evidence in response.
Also before me and forming part of the evidence I am taking into account is material provided by the Applicant on 3 June 2015 in response to a Notice to Produce issued by the Registrar at the Opponent’s request pursuant to s 202(c) of the Act. This material consists of the raw “Survey Responses” and “Data Responses” summarized by Garreth Chandler in Chandler 1, Mr Chandler being a market researcher who conducted a consumer survey in connection with the Claimed Mark on the Applicant’s behalf in January 2015.
Overview of the Evidence and Principal Submissions
I will refer as necessary to the parties’ evidence in the discussion below, but for now note the following by way of background. Lamb 1 is a copy of the declaration lodged with the original examiner of the opposed application in support of acceptance under s 41(6). Peter Lamb is Director and Chief Financial Officer of the Applicant and says that:
3. The Applicant is a manufacturer of a variety of beverages in New Zealand and Australia. These beverages include fruit juices, waters, milk based drinks and energy drinks.
4. In 1997, the Applicant first applied [376c GREEN] to energy drinks sold under the V brand [“the Applicant’s Energy Drinks”] in New Zealand. [376c GREEN] has since appeared on V bottle labels and cans, and is the predominant colour appearing on all packaging and collateral material supporting sales of [the Applicant’s Energy Drinks]. The energy drinks of the Applicant bearing the colour green were instrumental in driving acceptance of energy drinks in the market and now enjoy over 60% of that market in New Zealand.
5. [376c GREEN] was first used in relation to [the Applicant’s Energy Drinks] in Australia in 1999 and has been used continuously and extensively in Australia since that date. … The energy drinks of the Applicant bearing [376c GREEN] enjoy approximately 38% of the energy drink market in Australia.
Annexure B to Lamb 1 illustrates the way the Applicant used 376c GREEN on its canned and bottled energy drinks and their associated cardboard or plastic packaging as at December 2013, which I accept is essentially consistent with its use in Australia since 1999:
For its part the Opponent is best known as the producer and distributor of the well known COCA-COLA branded beverage. It also produces and distributes a rival energy drink to that of the Applicant, under the trade mark MOTHER. Disputing the Applicant’s claim to be the sole producer of energy drinks featuring the colour green, Romy Mueller, who is “Brand Manager, Energy Drinks” with a wholly owned subsidiary of the Opponent based in Sydney, notes in Mueller 2 at [14] that “the Opponent…has used the colour green on the packaging for its ‘Green Storm’ variant of energy drink in conjunction with the trade mark Mother.” Exhibit RM-45 to Mueller 2 shows the Opponent’s “Green Storm” variant apparently being offered for sale side by side with the Applicant’s Energy Drinks from a refrigerator bearing the Applicant’s branding:
Said to be relevant to both its s 41 and s 62(b) grounds, the Opponent submits that the opposed application is “fatally flawed” because, it alleges, the green shown in the representation attached to the application form (“the Green Swatch”) is not 376c GREEN as claimed in the endorsement to the application (“the Endorsement”). In this regard it relies on detailed evidence from Gary Burke, “Graphics Packaging Manager” with a wholly owned subsidiary of the Opponent, who has worked with the Pantone® Matching System for around 10 years. Based on Mr Burke’s observations using a “spectrodensitometer”, described as “one of the instruments used in the printing industry to measure, reproduce and calibrate colours”, the Opponent submits that for some reason, possibly a clerical error, the Applicant used a perceptibly different shade of the colour green, in particular PMS 7727c, for the Green Swatch by mistake. The two PMS greens, as shown in Exhibit GB-1 to Burke, are reproduced below:
The Opponent also points to the filing by the Applicant on 3 December 2015 of currently pending trade mark application 1738838 for a shade of the colour green which, like the opposed application, covers “Energy drinks” in Class 32. Albeit limited to use on cans and referring to “Pantone 376” rather than “Pantone 376c”, the endorsement on application 1738838 is essentially identical to that of the opposed application, stating that the mark claimed “consists of the colour(s) GREEN (Pantone 376) as applied to a can as the predominant colour as shown in the representation(s) attached to the application form.” That representation is reproduced on the left below, with the Green Swatch of the opposed application on the right:
I note the Applicant’s Packaging Manager R&D Alistair Sayers, quoted in paragraph 2 above, said, “The colour ‘376’ is the same colour as 376C, but with no reference to the paper on which it is printed.” However the two representations shown above appear to be quite perceptibly different. The filing of application 1738838 is thus tacit acknowledgment, in the Opponent’s submission, of the error made with the Green Swatch of the opposed application. The effect of that error, the Opponent argues, is that the scope of a registration to mature from the opposed application would be uncertain and the registration would be unenforceable as a result.
The Opponent’s additional, or alternative, argument in terms of s 41 of the Act is that the Claimed Mark contains no inherent adaptation to distinguish “energy drinks”, a matter which Mr Burley conceded on the Applicant’s behalf at the hearing. Both parties thus agreed that, to find the Claimed Mark registrable, I must be satisfied that because of the use it had enjoyed before the Filing Date it had by then become distinctive of the Applicant’s Energy Drinks. As will be seen, the Opponent cites use of colours other than green by the Applicant itself for a significant proportion of its energy drinks, and the Applicant’s concurrent prominent use of its “V” trade mark, as diluting the claimed distinctiveness of 376c GREEN alone as a trade mark. It submits that in a market where the colour green is already used by a number of different producers of non-alcoholic beverages the use relied upon by the Applicant would either not be perceived by relevant consumers as trade mark use or is in any event insufficient to establish the Claimed Mark had become distinctive.
As regards that use, the Applicant’s Energy Drinks are mainly sold in 250ml or 500ml cans and 350ml or 500ml bottles. Alistair Sayers says that:
7. The colour mark GREEN appears on all labels used for the Applicant’s Energy Drink[s], and on approximately 70% of all cans manufactured for the Applicant’s Energy Drink[s]. The entire body of the Applicant’s cans are saturated in the colour mark GREEN and deliberately produced to be free of text as much as possible so consumers can look to the colour mark GREEN to identify the Applicant’s Energy Drink[s]…
…
10. The Applicant’s colour mark GREEN is also used over the entire surface of its can multipack plastic shrink…
11. The Applicant’s colour mark GREEN is also used over the entire surface of its paperboard packaging for its bottle multipacks…
12. The Applicant’s artwork from 2007 and 2008 was used consistently in relation to the Applicant’s Energy Drink[s] until 2014, when it was updated with a new design. Use of the colour mark GREEN, however, has remained constant…
Where necessary I will hereafter refer to the Applicant’s “V” trade mark, which appears on all of the cans, bottle labels and associated plastic or cardboard packaging for the Applicant’s Energy Drinks, as “the V logo”. A typical example of the V logo is shown below:
While all of the cans, bottle labels and associated plastic or cardboard packaging of the Applicant’s Energy Drinks have invariably featured the V logo, Mr Sayers says that only approximately 70% of the cans used also have “the entire body…saturated in the colour mark GREEN...” Different colours are in fact used as the predominant background on “variants” (“the Variants”) in order to indicate flavour, such as yellow for lemon or orange for orange, or to indicate a change in ingredients such as white (also referred to in the evidence as “silver” or “graphite”) signaling a sugar-free variant. Annexure Y to Lamb 1 is a copy of a 31 page “Brand Guide” produced by the Applicant in 2003, page 7 of which shows the colour regime to be used for the V logo when used on backgrounds that are 376 GREEN, white (or silver) and black:
Moreover, although neither Mr Lamb nor Mr Sayers explicitly says so, the evidence shows the Variants are also sold in bottles. As with the variant cans, colours other than green are used as the predominant colour on these bottle labels and on associated cardboard or shrink wrap packaging to indicate the flavour or some other characteristic of the beverage. The Applicant’s “Senior Brand Manager” Christopher Donald explains that:
10. The Applicant’s variants include a flavour or ingredient which is not included in the Applicant’s core Energy Drink. The colours used with variants differ according to the flavour or some characteristic of each variant, but they are all branded in the usual manner with the V logo and with the colour mark GREEN. Attached and marked CJD2 is a printout showing images of the Applicant’s Energy Drink[s] and variants as at 2012.
Attachment CJD2 to Donald is reproduced below, from which I observe not only cans, but bottle labels too, are shown with blue, white or black as their predominant background colour, as well as shrink wrap with white or blue predominant:
In Mueller 1 Ms Mueller provides some details of this use of variant colours for the Applicant’s Energy Drinks, exhibiting a range of the Applicant’s cans, bottles and packaging showing blue, orange and white used as the predominant background colour on bottle labels and black and purple used for plastic shrink wrap. She says:
11. I have observed that the [Applicant] similarly uses different colours for its beverage containers and beverage labels for different flavours of energy drinks across its “V” range. Now produced and shown to me and marked Exhibit RM-14 is a collage of several “V” branded energy drinks sold in Australia. The common element and the indicator of trade origin in each case is the trade mark “V” - not the colour of the package. The predominant colours of these products include blue, green, orange, white, purple, yellow and crimson. From records available to [my company] I have ascertained that the approximate launch dates for these various “V” branded energy drinks in Australia were as follows:
0% Sugar (September 2013) Lemon (June 2008)
Berry (December 2006) Not Orange (February 2013)
Black (June 2005) Pocket Rocket (September 2009)
Blue (October 2011) Purple (September 2012)
Graphite (June 2013) Sugarfree (before February 2004)
Green (before February 2004)
Ms Mueller adds in Mueller 2 that:
It is true that, of the Applicant’s energy drinks, the flavour which is the highest selling flavour in Australia is packaged with a label which has a green background. The socalled “variants” have packaging which have different background colours. A range of different colours have been used by the Applicant including orange, blue, white, black and purple. I do not agree that this is a comparatively small number of “variants”. There are a large number of variants as can be seen from Exhibit RM-14 to my first declaration. Furthermore, sales of the so-called “variants” are considerable. Now produced and shown to me and marked Exhibit RM-40 is a printout of historical Scan Data provided by IRI-Aztec (Australia) Limited for sales of “V” branded beverages in Australia for P&C (Petroleum and Convenience stores) in the period 2009 to 2014 and for Grocery stores (weighted) in the period 2010 to 2015. This data is collected by IRI-Aztec Limited based on scans of bar codes on products sold in these trade channels in the relevant periods. I note that several million “V” branded variants are sold each year in packaging which does not use a green background but uses other colours.
Based on the evidence as a whole I conclude that at least 30% of the Applicant’s Energy Drinks, whether sold in cans or bottles, were variants whose labelling and associated packaging did not have the colour green as their predominant colour. There is accordingly considerable force in Ms Ryan’s submission that:
86. Mr Lamb in Lamb 2 para 20, explains these variants as follows:
Other colours are used with the variants, being colours that are associated with the flavour or particular quality of each variant. Those different colours are not used for any other purpose than to indicate the flavour or quality of the variant, or for aesthetic purposes.
87. However, if one is to compare a predominantly green coloured can of “V” branded energy drink with a predominantly blue coloured can of “V” branded energy drink, how is one to tell the difference between the colour that is supposed to be a trade mark and the colour that is not?
Also useful to highlight at this point is the Applicant’s acknowledgment in Lamb 1 of third party use of the colour green for soft drinks generally, (to which, I note, Ms Ryan’s above question appears similarly pertinent):
21. I am aware of other beverage manufacturers that use some shade of green as a colour for the beverage itself; in labelling or design; or in packaging. In general, such use has a functional purpose, being to indicate some characteristic of the beverage, such as flavour or ingredient that is green, or in the case of packaging, to prevent light degradation but allowing the contents to be seen. Alternatively, the use is for decorative, aesthetic or design purposes, or to make a representation about the beverage that is associated with the colour green. It is generally known that the colour green represents calm, nature, health, growth, or money. I refer to the evidence filed by the Opponent which confirms use of the colour green in the manners I have outlined. There is nothing unusual or distinctive about those uses of colour in relation to beverages.
22. I also note that almost all of the products shown in the Opponent’s evidence are general beverage products. As outlined in paragraph 4 of this declaration, energy drinks are distinguishable from general beverage products, given their purpose and particular composition.
On this last point made by Mr Lamb, I mention that both parties appear to have a common understanding of what the description “energy drinks” used in their evidence embraces, essentially being carbonated beverages containing stimulants such as caffeine, guarana or ginseng. While both parties view such beverages as falling within a distinct market segment aimed principally at young adults, Mr Burley did contest Ms Ryan’s characterization of energy drinks and (other) non-alcoholic beverages as being “substitutable”, arguing that, “A person desiring a soft drink is not likely to want an energy drink, with its characteristics of high caffeine or other stimulant.” He submitted the evidence showed that energy drinks were “a recognised category within the food and beverage market…distinct and separate from soft drinks and other similar products,” (such as conventional carbonated soft drinks, bottled water, “sports drinks” or fruit juices), adding that, “They are generally sold in a different shelf or section to general soft drinks.” The issue might arguably be relevant to the Opponent’s s 41 ground in that many of the examples of use of the colour green by other traders in the Opponent’s evidence are in relation to, as Mr Lamb puts it in Lamb 1 at [21]-[22] quoted above, “general beverage products” and the Applicant seeks to distinguish its use in the energy drink segment of the market from this historical use in the broader soft drink market.
The Opponent’s position can be seen from Mueller 1 in its evidence in support:
15. Energy drinks are particular types of soft drinks generally containing sugar, caffeine and/or another stimulant. Whilst cola drinks such as Coca-Cola cola drinks often contain caffeine, they are not generally described as energy drinks. Those brands which are most popularly promoted as energy drinks in Australia are Red Bull, “V” (the brand of the applicant of the Opposed Application), “Mother” (an energy drink sold by [the Opponent]), “Monster” (an energy drink of Monster Energy Company) and Wicked energy drink. Whilst not categorised as an energy drink, Mountain Dew Energised is promoted as an “energised” drink. It contains 15mg of caffeine per 100ml, which is about half the caffeine content of energy drinks such as “V”.
16. Energy drinks in Australia are sold in convenience stores, milk bars, cafes and supermarkets side by side with other non-alcoholic beverages. All non-alcoholic beverages are generally sold through the same trade channels, displayed in the same parts of retail stores and are purchased by consumers in similar circumstances. All soft drinks containing sugar will provide energy. Now produced and shown to me and marked Exhibit RM-31 is a photograph of a shop fridge in Melbourne, Victoria from which energy drinks and other soft drinks are offered for sale together. In my experience this is a very common trade presentation for nonalcoholic beverages.
Directly addressing Mr Lamb’s above-quoted view, Ms Mueller says in Mueller 2:
I refer to paragraph 22 of [Lamb 1]. Whilst I agree that energy drinks are a market segment in themselves, they fall within the general category of nonalcoholic beverages. Energy drinks, carbonated beverages, sports drinks and juices are often all sold together. Energy drinks compete against isotonic drinks and carbonated beverages - particularly caffeine containing cola beverages such as Coca-Cola. In this respect I refer to Exhibit RM-31 of my first declaration which shows energy drinks and other popular carbonated beverages being sold from the same fridge. This is typical of how such products are sold from convenience stores and grocery stores in Australia.
To the extent that it be relevant to the following discussion, my own view is that, on a conventional analysis, energy drinks and (other) soft drinks generally should be considered “goods of the same description” as that term is contemplated by s 14(1) of the Act. The evidence satisfies me that energy drinks and other non-alcoholic beverages, including traditional carbonated soft drinks and what have become known as “sports drinks” such as the Opponent’s POWERADE branded electrolyte drink,[5] are all often produced by the same companies (as the Applicant and the Opponent themselves do), are distributed in the main via the same channels to the same outlets, are displayed for sale in close proximity and are sold to largely similar consumers. Indeed, the distinction between energy drinks and so called “sports” or “isotonic” drinks in particular is on the face of it blurred by the Applicant’s own reliance in support of the application on use of the Claimed Mark for an “ISOKINETIC ENERGY + HYDRATION” beverage, which I understand is not an energy drink, as shown in Annexure M to Lamb 1:
[5] Referred to in Mueller 1 at [5] and [9].
Moreover, that energy drinks and other non-alcoholic drinks are goods of the same description appears consistent with the Full Federal Court’s reasoning in E & J Gallo Winery v Lion Nathan Australia Pty Limited[6] in so finding in relation to beer and wine and in which the Court agreed with Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd[7] that:
…the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. (My emphasis)
[6] [2009] FCAFC 27 per Moore, Edmonds & Gilmour JJ.
[7] (1993) 26 IPR 246.
That said, there was consensus as to who in the main constituted the relevant market for energy drinks, the Opponent not disputing the evidence of the Applicant’s Senior Brand Manager Christopher Donald that:
4. Energy drinks are a carbonated beverage, marketed to consumers based on their functional benefits which are supported by stimulating ingredients such as caffeine, guarana or ginseng. The communication target market for energy drinks is 18-25 year olds, but the key consumption base includes males and females up to their mid-thirties.
Bearing the foregoing matters in mind, it is convenient to commence with a discussion of the Opponent’s s 62(b) ground before moving on to the s 41 grounds.
Discussion
Section 62(b)
Section 62(b) of the Act is reproduced below:
Application etc. defective etc.
62. The registration of a trade mark may be opposed on any of the following grounds:
(a) …
(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.
The ground based on s 62(b) of the Act is particularised in the SGP as follows:
The Applicant falsely represented in its submissions and in its evidence that the colour used for the packaging of its products operated as a trade mark and that consumers understood and used the colour as an indication of trade source.
As Mr Burley pointed out, Ms Ryan’s submissions on this ground at the hearing sought to expand considerably on what was indicated in the SGP. Before addressing that issue, I note that I am in general agreement with Mr Burley’s submission in relation to the ground as pleaded:
107. The Applicant submits that the statement of the Opponent’s “particulars” set out above does not amount to a valid objection under s 62(b) and should have been rejected at the outset. The “particular” does not refer to any specific representations which were false in material particulars, but merely takes issue with the conclusions presented by the Applicant from its review of the visual evidence.
108. The ground of opposition cannot stand even as now supplemented by the Opponent’s submissions. First, in respect of the assertion by the Opponent that the Applicant’s evidence that it has used the Mark “as a trade mark” must be false. Whether a mark operates as a trade mark and whether consumers understand that connection are both legal conclusions whose validity can only be assessed by the Hearing Officer or a court [or, I interpolate, the examiner of the application at first instance]. If this ground were to succeed then any application under s 41 of the Act which is unsuccessful is potentially “false”.
It does seem to me that it was for the examiner of the application to determine whether or not he was satisfied the use disclosed in Lamb 1 indicated the Claimed Mark had “operated as a trade mark and that consumers understood and used the colour as an indication of trade source.” If he had concerns, the examiner had the opportunity to raise these with the Applicant. I am thus not satisfied Lamb 1 necessarily contained “evidence or representations that were false in material particulars” of the kind actually alleged in the SGP or of the kind contemplated by s 62(b) at all.
Moreover Lamb 1 does undoubtedly disclose substantial use of what I accept is 346c GREEN by the Applicant in relation to its energy drinks. This includes evidence of impressive sales and significant advertising and promotional activity since 1999, widespread television advertising, promotion of music festivals, eye-catching standalone displays in supermarkets and convenience stores, some 121 sales representatives’ cars painted green in all six States and much else. Accordingly it was arguably open to the examiner to accept the application based on that use. I thus agree with Mr Burley’s submission that I could not in any event be satisfied on the evidence before me that there was “a causal connection between those allegedly false representations and the decision to accept the application.”[8] Were that the end of the matter, accordingly, I would find the Opponent had not established its s 62(b) ground.
[8] See Mars Australia Pty Ltd v Société des Produits Nestlé SA (2010) 86 IPR 581 per Bennett J at [20].
As mentioned, however, Ms Ryan sought to widen the basis underpinning this ground from what is indicated in the SGP. Noting that Lamb 1 does not explicitly mention the Variants, she submitted:
99. …“variation” packaging accounts for at least about 30% of [the Applicant’s] energy drink sales. The variations bear none of the usages of the colour green which [the Applicant] relied upon to obtain acceptance. Moreover, given the large percentage of variants in the overall output of energy drinks by [the Applicant], [the Applicant’s] evidence underplays the diluting effect of having energy drinks in a range of colours under the V [logo] trade mark and therefore overplays the extent to which the colour of the product was likely to be perceived as an indicator of trade origin.
100. Overall, any assertion that the Applicant has used the Opposed Mark as a trade mark must be false because:
• The Opposed Mark is not Pantone 376c but some indeterminate hybrid of the Green Swatch and the Endorsement; and
• The use relied on was not use as a trade mark.
As regards the first issue, it is true that Mr Lamb does not explicitly mention the Variants. However, as Mr Burley highlighted, cans with predominately white, black, gold, blue or orange livery, bottles with white, orange, blue or black labels, and white or blue plastic shrink wrap, are all shown in annexures to Lamb 1 and Mr Lamb does in any event attest to longstanding and substantial use of 376c GREEN in its own right in connection with the Applicant’s Energy Drinks. Taking this into account, and for the reasons set out at [34]-[36] above, the Opponent’s s 62(b) ground, to the extent it depends upon alleged omissions in Lamb 1, is not in my view established.
As regards the second issue, the Green Swatch is of course supposed to be, and is said in the Endorsement to be, a representation of 376c GREEN. As mentioned, however, the Opponent sought to establish via its evidence that the opposed application was “fundamentally flawed” because, for some reason, possibly a clerical error, the Applicant had apparently used Pantone 7727c for the Green Swatch by mistake. For its part, the Applicant does not concede that the Green Swatch is other than 376c GREEN. It relies in this regard on a declaration by Susan Peacock, a “Trade Mark Administrator” with its attorneys in New Zealand (“Bell Gully”), who says she filed the opposed application after being instructed “to refer to the Applicant’s New Zealand application 795206 for the colour mark GREEN for details to use in the Australian application.” As she further explains:
I copied the details under the New Zealand application into an application for filing at IP Australia. I located a swatch of the Applicant’s colour mark GREEN in the Bell Gully file for the New Zealand application, and used a colour printer to scan a copy of the swatch which I filed together with the Australian application on 15 June 2012. Attached and marked SJP1 is a copy of the official filing receipt issued by IP Australia.
Details of application (now registration) 795206 taken from the Intellectual Property Office of New Zealand are included at Annexure Z to Lamb 1. It covers “Energy drinks; none of the aforementioned goods being cocoa-based beverages” and I note bears the identical endorsement to that of the opposed application, “The mark consists of the colour green (Pantone 376c), as shown in the representation attached to the application, applied as the predominant colour to the goods, their packaging or labels…” As mentioned, a Graphics Packaging Manager with a subsidiary of the Opponent, Gary Burke, used a colour calibrating device known as a spectrodensitometer on an electronic copy of Exhibit SJP1 as reproduced in hard copy using a high end colour printer (“the Trade Mark Sample”) and determined it to be Pantone 7727c. He explains that colour is standardly measured according to what is known as its “Delta-E” (or “∆E”) value and says:
19. The general industry standard for uniformity of colour requires a ∆E difference of no more than three. Differences in colour with ∆E values above about 2.3 are noticeable to the human eye. By setting a ∆E tolerance level, a printer defines the difference which will be acceptable.
…
24. …The ∆E between the [official Pantone] swatch for PMS 376C and the Trade Mark Sample measured by the spectrodensitometer was 27.09. This represents a significant colour difference easily discernible to the unaided human eye.
Mr Burley took issue with the reliability of Mr Burke’s above conclusion, noting that:
91. …as Mr Burke’s evidence makes clear, reproduction of a particular colour is subject to and dependent on, (a) the chemical nature and colours of the inks which are mixed to obtain the colour, (b) the ability of a machine or electronic apparatus to detect and accurately reproduce a particular colour, (c) the types of surface upon which the colour is to be applied and (d) the ambient light in which the colour is observed…
92. To the extent that Mr Burke observed discrepancies in the colour referred to in the colour swatch and Pantone 376C this may also be explained by the fact his analysis is based on a “copy of a copy”. He states that in conducting his analysis he was provided with an electronic copy of exhibit SJP-1 and he then used a colour printer to print a colour copy: [Burke] at [22]. Mr Burke does not identify what type of paper his “copy” was printed on, despite noting that different types of paper may display the colour in a different way, nor does he discuss the lighting available at the time his experiments were conducted.
Both Counsel acknowledged s 27(2)(a) of the Act requires that an application “be in accordance with the [R]egulations” and that s 27(3)(a) says it “must include a representation of the trade mark.” Also relevant to the parties’ submissions were regs. 4.2(1)(b) and 4.3(7), which state respectively:
4.2(1)(b) To be taken to be filed, an application for registration of a trade mark that is in an approved form must…include a representation of the trade mark that is sufficient to identify the trade mark.
4.3(7) If a trade mark for which registration is sought contains or consists of a sign that is a colour, scent, shape, sound or an aspect of packaging, or any combination of those features, the application for registration of the trade mark must include a concise and accurate description of the trade mark.
While recognizing that s 57 of the Act precludes reliance on s 40 as a ground of opposition, Ms Ryan also noted that s 40 says an application “must be rejected if the trade mark cannot be represented graphically.” She further noted that in Woolworths Limited v BP plc (No 2)[9] (“BP”), which also concerned an application to register a particular shade of the colour green, the Full Federal Court (Heerey, Allsop and Young JJ) endorsed the approach of IP Australia’s Trade Marks Manual of Practice and Procedure at Part 21, paragraph 2.1, which counsels:
[Applications to register non-traditional signs such as colour] require a description which helps make clear what is being claimed as a trade mark. Ideally, the description of the trade mark should appear on the application when filed. There should be no discrepancy between the description and the required graphical representations and the relationship between them should be spelled out, for example by including a cross reference to the representation in the description. It is the combination of description and representation(s) that forms the mark.
[9] (2006) 70 IPR 25.
Ms Ryan submitted that:
Here, the [E]ndorsement is ambiguous as it describes the mark in two ways – first as a particular shade of green known as Pantone 376c, and secondly as being the colour of the representation attached to the application.
Mr Burley responded that:
The Applicant has clearly and accurately described the [Claimed] Mark in a way that is sufficient to identify it. Under the heading “kind of mark description” in the trade mark application the Applicant states: “The mark consists of the colour green (Pantone 376C) as shown in the representation attached to the application…”. The [Green Swatch] then, to the best of the Applicant’s ability, reflects that description.
Counsels’ submissions, it must be said, were made principally in connection with the Opponent’s s 41 ground and I will accordingly return to them in that context. As far as the alleged colour discrepancy underpins the Opponent’s s 62(b) ground, however, I am not satisfied the ground is established. Even if I accept that Mr Burke’s evidence reliably establishes there is a perceptible difference in colour between 376c GREEN and the green of the Green Swatch, this was obviously not something of which the examiner of the application was aware. He was presumably concerned simply with assessing the nature and extent of the Applicant’s claimed use of the colour GREEN as apparently described in the Endorsement, namely of 376c GREEN. Whether or not the colour of the Green Swatch matched that description was therefore not on the face of it “material” in any way to the examiner’s favourable assessment of the evidence of use contained in Lamb 1. Moreover, I agree with Mr Burley that this conclusion appears consistent with the “evidence summary sheets” of the examiner himself, and of the examiner’s “Team Leader”, which are included in the copy of IP Australia’s file obtained by the Opponent which forms Exhibit GMC-1 to Chambers 1.
To conclude, I find that the Opponent’s s 62(b) ground, whether as pleaded in the SGP or as further developed at the hearing, is not established.
Section 41
As from 15 April 2013 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 repealed s 41 of the Act as it then stood and substituted new wording. As the parties acknowledged, the Registrar’s position is nevertheless that the now repealed section continues to apply to trade mark applications filed before that date.[10] Accordingly the repealed section remains relevant here and all references to s 41 in this decision are to the section as it stood prior to its amendment, as set out below:
[10] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50.
Trade mark not distinguishing applicant's goods or services
41 (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).
The ground based on s 41 is particularised in the SGP as follows:
i. 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.
ii. The Applicant has not, pursuant to s 41(6)(a), established that the colour green (Pantone 376c) does in fact distinguish its energy drinks from the beverages of other persons.
iii. The Applicant has not established that when it sells energy drinks in green coloured packages or with green coloured labels which also have applied to them the trade mark “V” that it is not the trade mark “V” which exclusively indicates trade origin.
iv. The Applicant has not established that when it sells its “V” branded energy drinks in packages with labels which are respectively red, black, yellow, green, silver and blue, depending on the flavour of the energy drink, that when it colours its packages or labels green that the colour green is itself used as a trade mark. [sic]
v. The colour green is inherently the colour of some energy drinks which incorporate green ingredients such as lime, kiwi fruit or avocado.
vi. Pantone 376c does not adequately define the green colour used by the Applicant on the labels and on the packaging of its “V” energy drinks.
vii. The endorsement defining the [Claimed] Mark does not adequately nor clearly define the mark used by the Applicant and as such it was not possible for the Applicant to establish that the mark so defined distinguishes its energy drinks from the beverages of other persons.
As foreshadowed, in her submissions Ms Ryan incorporated these particulars into three broad issues, discussed in terms of s 41(2) and 41(6) below, namely:
(i) that the application must be rejected pursuant to s 41(2), not being capable of distinguishing the Applicant’s Energy Drinks because the colour claimed is uncertain;
(ii) that, whereas the Applicant accepts it bears the onus of establishing the Claimed Mark was distinctive of its energy drinks as at the Filing Date, the use it relies upon does not show use as a trade mark; and
(iii) that the use relied upon is in any event insufficient to warrant invoking s 41(6) in the Applicant’s favour.
Section 41(2)
As discussed at [39]-[45] above, the Opponent relies on evidence from one of its subsidiaries’ graphics and packaging specialists, Mr Burke, to support its claim that the green colour of the Green Swatch is significantly different from 376c GREEN. Ms Ryan submitted that the Endorsement was therefore ambiguous because it referred to the Claimed Mark as both consisting of 376c GREEN and being as shown in the Green Swatch, which Mr Burke says is Pantone 7727c. She submitted that:
25. …the significant disparity between the representation of the trade mark and its particulars is fatal to the Opposed Application. The [Claimed] Mark is indeterminate; it is an impossible hybrid of the Green Swatch and the colour claimed in the Endorsement (Pantone 376c).
Because of this intrinsic ambiguity surrounding the actual colour of the Claimed Mark, argued Ms Ryan, I could not be satisfied “the mark” was capable of distinguishing the Applicant’s Energy Drinks and I must accordingly reject the application pursuant to s 41(2) of the Act.
As has been seen, Mr Burley, while not conceding that the Green Swatch is other than 376c GREEN, countered that the Applicant had in any event “clearly and accurately described the [Claimed] Mark in a way that is sufficient to identify it” and that the Green Swatch reflects the description in the Endorsement “to the best of the Applicant’s ability.”
Accordingly I must firstly form a view as to whether the Green Swatch is more likely than not to be a shade of green perceptibly or significantly different from 376c GREEN as stated in the Endorsement. If so, then I must decide whether this is a “fatal flaw”, as Ms Ryan submits, which obliges me to refuse the application pursuant to s 41(2).
On balance I find I am not satisfied the Green Swatch is 376c GREEN. The evidence of Mr Burke strikes me as reliable and persuasive, being based on apparently objective data not directly challenged in the Applicant’s evidence. Indeed in response the Applicant relies solely on the declaration of Susan Peacock, who merely says that in filing the opposed application she “located a swatch of the Applicant’s colour mark GREEN in the Bell Gully file for…New Zealand application [795206]” and used a colour scan of this for the Green Swatch. As Ms Ryan highlighted, Ms Peacock “does not refer to any means by which she corroborated that the swatch she copied (or indeed the copy) was the colour Pantone 376C.”
Nor should the Applicant have doubted the issue needed addressing, with Mueller 1 having clearly raised it in the Opponent’s evidence in support. Ms Mueller says:
2. …Now produced and shown to me and marked Exhibit RM-1 is a colour abstract showing details of accepted application 1496541 (“the Opposed Application”). The particular colour green covered by the application is ambiguous. It is said to be the colour shown in the representation attached to the application. It is also said to be Pantone 376c. These are two different colours.
3. Pantone 376c is a light green. Now produced and shown to me marked Exhibit RM-2 is a copy of a colour palette showing a range of colours including the colour Pantone 376c. Also incorporated in Exhibit RM-2 is a single sheet showing Pantone 376c. The colour shown in the representation to the Opposed Application is not Pantone 376c. The colour of the representation attached to the Opposed Application is a darker green. Because of the inconsistency between the colour shown in the representation attached to the Opposed Application and the endorsement which indicates that the green is Pantone 376c, it is not clear to me which actual colour is intended to be covered by the application.
Based, it must be said, on some of the cautionary disclaimers regarding light conditions, viewing medium, nature of the packaging material and so forth raised by Mr Burke himself, Mr Burley did question whether the transmission to, and the measurements by, Mr Burke were under conditions which may have compromised his findings. However Mr Burke’s uncontested finding that the colour of the Green Swatch differs from 376c GREEN by 27.09 ∆E when measured under the same conditions remains significant on the face of it given his unchallenged evidence that “differences in colour with ∆E values about 2.3 are noticeable to the human eye.” This more than tenfold difference appears well beyond the margin of error discussed by Mr Burke in having to deal variously with electronic or printed copies, or copies of copies, of the colour samples concerned. Indeed, the difference is sufficient to enable him to venture that Pantone 7727c, a significantly darker shade of green than 376c GREEN, is the actual colour of the Green Swatch.
Moreover I do not think I can ignore what my own eyes reveal. Based on the relevant exhibits to Burke shown at [12] and [13] above, which I have viewed both in hard copy and on screen, I agree with Mr Burke that the Green Swatch clearly appears to the naked eye to be a significantly darker shade of green than 376c GREEN.
I thus conclude on balance that the colour of the Green Swatch is not 376c GREEN as stated in the Endorsement, but rather a quite different shade of green. Having so concluded, is this a “fatal flaw”, as Ms Ryan submits, obliging me to refuse the application pursuant to s 41(2)? Again, on balance, I believe that it is.
As discussed at [42] above, both Counsel acknowledged s 27(2)(a) of the Act requires that an application “be in accordance with the [R]egulations” and that s 27(3)(a) says it “must include a representation of the trade mark.” The Full Federal Court in BP considered the requirements of regs. 4.2 and 4.3 (set out at [42] above) in the light of s 27 at some length at [39]-[49] of its joint judgment. As regards reg. 4.3 in particular, the Court said:
[42] Regulation 4.3 recognises that difficulties may arise in providing a sufficient representation of a trade mark in pictorial or diagrammatic form. ... Hence, reg 4.3(7) provides that the applicant must include a concise and accurate description of the trade mark where registration is sought for a sign that contains, or consists of, a colour, scent, shape, sound, or aspect of packaging or any combination of those features. Regulation 4.3(8) makes it clear that the description is intended to serve the same purpose as the representation of the trade mark, namely to demonstrate the nature of the trade mark or to show each feature of the trade mark sufficiently. ... More generally, we consider that ordinary English words such as “description”, “particulars” and “representation”, which are not defined in the Act, should be construed flexibly so as to give effect to the purpose and policy of the Act.
In a passage highlighted by Ms Ryan the Full Court concluded:
[49] We note that the approach which we prefer accords with that outlined in the Trade Marks Office Manual of Practice and Procedure published by IP Australia at paras 2.1 and 2.2 of Pt 21 as follows:
2.1 Description endorsement
All these kinds of signs [that is, non-traditional signs such as colour] require a description, whether or not a pictorial representation is relevant. Ideally, the description of the trade mark should appear on the application when filed. There should be no discrepancy between the description and the required graphical representations and the relationship between them should be clearly spelled out, for example by including a cross reference to the representation in the description.
Without a clear description of the trade mark claimed, it may be difficult to research it for section 41 purposes. It may also be difficult to search the database for any conflicting trade marks on the register. There may also be questions raised about the scope of the applicant’s claim. The description is thus very important in helping decide the exact nature of the trade mark claim. Examples of appropriate descriptions for the various kinds of signs are included in the specific sections of the Part referring to those signs.
2.2 Amendments to descriptions
It is important to note that the description is an integral part of the representation of the trade mark and any amendments made to it will affect the trade mark. If the applicant puts forward a proposal to amend the description that would change the identity of the trade mark then that amendment will not be allowed. When a description is supplied after filing care must be taken that the description is exactly in accord with the trade mark as filed. The combination of description and representation should not include any differences that would affect the identity of the trade mark, thus constituting an unallowable amendment.
See also paras 3.1 and 3.5 of the manual.
In the present matter, then, the Endorsement is the “description” and the Green Swatch is the “representation.” Accepting that the actual colour the Applicant intended to register was 376c GREEN, reg. 4.3(7) requires that the application for registration “include a concise and accurate description of the trade mark.” However on the one hand the Endorsement describes the claimed colour as 376c GREEN and on the other describes it “as shown in the representation attached to the application”. As I have found, the “representation”, that is the Green Swatch, is a significantly different colour from 376c GREEN and thus the Endorsement as a whole does not on the face of it comply with reg. 4.3(7).
Moreover, I do not think the Applicant has complied with reg. 4.2(1)(b), which requires that an application “include a representation of the trade mark that is sufficient to identify the trade mark.” In this case, as I have found, the representation or Green Swatch, being a significantly different colour from the colour the Applicant apparently intended to register, is manifestly insufficient to identify the Claimed Mark.
It is convenient to note in passing that in BP the Full Court had to decide whether amendments to the endorsements of BP plc’s opposed applications to register the colour green were contrary to s 65(2) of the Act, which prohibits amendments that “substantially affect the identity of the trade mark.” In this context the Court said:
[48] The analysis, in any case, of the “identity of the trade mark” will not necessarily be straightforward… When one is dealing with colour, the notion of the representation and the identity of the mark will almost certainly be linked to the context in which the mark is said to be distinctive. Thus, the manner in which the colour is to be used as a trade mark, as described in any endorsement to the trade mark application, may well be central to understanding both the representation and the identity of the trade mark.
Taking this into account, I agree with Ms Ryan that the discrepancy in colour in this case is sufficient to “substantially affect the identity” of the Claimed Mark and thus, (albeit not sought by the Applicant), s 65(2) would preclude amendment to either the Endorsement or the Green Swatch at this point.
Returning to the s 41(2) issue, I also agree with Ms Ryan that the effect of that error is that the scope of a registration to mature from the opposed application would be uncertain and that the registration may well be unenforceable as a result. In these circumstances then, my conclusion is that because the Claimed Mark itself is defined ambiguously it is not capable of distinguishing the Applicant’s Energy Drinks. In summary, the Opponent has in my view established its s 41(2) ground.
In case I be wrong in concluding that s 41(2) determines the matter, nevertheless, I will move on to a consideration of the Applicant’s evidence of use and whether that use is otherwise sufficient to invoke s 41(6) of the Act in the Applicant’s favour. In this regard I note that the Registrar’s delegate at first instance in the BP matter faced a similar issue to that just discussed, also involving s 27(2)(a) and possible non-compliance with reg. 4.3(7) due to the alleged lack of clarity in the description of the colour mark claimed,[11] but did not consider this to be a valid ground of opposition. However what I think distinguishes the present case is that the issue was apparently raised and argued before the Delegate in the BP matter as a ground in its own right (in addition to opposition grounds based on ss 41(6) and 62(a)), rather than as fundamental to the issue of the subject trade mark’s capacity to distinguish under s 41(2). In the event, the Hearing Officer concerned summarily dismissed the issue, albeit noting it might yet “indirectly impact” on other opposition grounds, saying at 195:
Of the three specific grounds, I will dispose of the second one summarily. That ground goes to a lack of accuracy in the description of the mark. As a specific ground of opposition, it must fail, simply because it is not an allowable ground of opposition. The only allowable grounds are specified, in Pt 5 of the Act, by s 57. They are the grounds (save one) on which an application may be rejected under Div 2 of Pt 4, together with the further grounds set out in ss 58–62.
The registrar will, in terms of s 33, accept an application unless she/he is satisfied either that there are grounds for rejecting it or for holding that it has not been made “in accordance with this Act”. The latter failings, however, are not correctly called “grounds for rejecting” the application, even though, paradoxically, they may be the causes of an application being rejected. The grounds of rejection are those listed in Div 2 of Pt 4 of the Act only.
Under s 57, all of those grounds of rejection, except for alleged inability to graphically represent the trade mark, are retained as potential grounds of opposition after acceptance. Certain other grounds are also stipulated as grounds of opposition. However, outside those, mere non-compliance with a regulation is foreclosed to an opponent as a potential ground.
That is not to say that a lack of clarity in the definition of a trade mark cannot indirectly impact on the grounds allowable under the act. For example, a poorly defined trade mark may result in a claim so wide that some parts of it fail to clear objections that can legitimately be raised by an opponent. However, that will be something to consider en route to deciding if, in terms of s 55, any of the allowable grounds have been established.
[11] Woolworths Limited v BP Amoco plc (2000) 52 IPR 192. I note that reg. 4.3(7) is incorrectly referred to as reg. 4.2(7) in the decision.
As far as the current matter is concerned I do agree with the Hearing Officer that the lack of clarity surrounding the actual mark claimed may in any event be relevant to my consideration of the Opponent’s s 41(6) ground, to which I now turn.
Section 41(6)
As mentioned, the Opponent bears the onus of establishing its s 41 ground of opposition. However, its onus as far as ss 41(5) and (6) are concerned is effectively limited to satisfying me that the Claimed Mark is not sufficiently adapted to distinguish energy drinks as to qualify for registration on that basis alone. If it does so, the onus then shifts to the Applicant to satisfy me that either s 41(5) or (6) should be invoked.[12] In this case, as mentioned, Mr Burley conceded on the Applicant’s behalf that s 41(6) was applicable to the Claimed Mark and so the discussion which follows is accordingly confined to s 41(6) only. The issue is whether or not I am satisfied based on the evidence that the Claimed Mark was distinctive of the Applicant’s Energy Drinks as at the Filing Date, 15 June 2012.
[12] See for example Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [26] to [28] and [40].
In this regard, as Ms Ryan observed, the Full Court in BP said (at [72]):
Section 41(6)(a) of the Act requires the applicant to establish at least two things: first, that there has been use of the trade mark that is the subject of the application before the filing date, being, of course, use as a trade mark; and, second, that because of the extent of that use before the filing date the trade mark does distinguish the designated goods or services as those of the applicant.
On the first issue, Mr Burley noted that the Full Court went on to say (at [77]):
Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin: see Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 422–5; [1963] ALR 634 at 636–9; 1B IPR 523 at 532–5, the Caplets case; Musidor BV v Tansing (1994) 52 FCR 363; 123 ALR 593; 29 IPR 203; Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107; 47 IPR 481; [1999] FCA 1721 at [19]–[20]; Sports Break Travel Pty Ltd v P & O Holidays Ltd (2000) 50 IPR 51; [2000] FCA 924 at [14]; Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90; 177 ALR 167; 48 IPR 257; [2000] FCA 876 at [12]; Aldi Stores Ltd Partnership v Frito-Lay Trading Co Gmbh (2001) 190 ALR 185; 54 IPR 344; [2001] FCA 1874 at [22]–[23] and [76].
Mr Burley continued:
The question to consider is one of perception. It is clear that the Applicant promotes the [Claimed] Mark as an indicia of origin (see for example the brand guide). Further, all of the Applicant’s promotional materials and the product itself have strong visual clues to the colour green. This is clear from the evidence discussed above, and by way of example in particular:
(a) the packaging of the Applicant’s 250 ml bottle since 1999;
(b) the packaging of the Applicant’s bottles and multipacks (which include shrink and cardboard ‘wrap arounds’ and bottle cap lids saturated in the [Claimed] Mark);
(c) the way in which the use of the [Claimed] Mark on the product packaging is further emphasised when that product is displayed in refrigerators – by use of promotional ‘strips’ appearing below the product when stacked in a refrigerator and/or stickers on the outside of the refrigerator. This effectively creates a ‘wall of green’ within a refrigerator;
(d) the way in which the use of the [Claimed] Mark on the product packaging is further emphasised when the product is stacked in an in-store display unit, with the cardboard box which forms the transport packaging of the product also displaying the [Claimed] Mark. Even where alternative colours are used (say on in-store displays or on variant products where the [Claimed] Mark appears behind the [V logo]) these actually serve to emphasise, by contrast, the [Claimed] Mark (see for example the use of the [Claimed] Mark on the purple variant and the use of dark purple ‘bugs’ which heightens the emphasis of the green in advertising displays;
(e) the use of the [Claimed] Mark on all aspects of the Applicant’s marketing at outdoor festivals; and
(f) the use of the [Claimed] Mark on in-store promotional displays and point of sale material, refrigerators, t-shirts, iphone covers etc.
The Opponent acknowledges this widespread use, but for a number of reasons submits the relevant consumer would not thereby perceive that the Applicant was using 376c GREEN alone as a trade mark in relation to its energy drinks. Firstly, it asks, why would the consumer do so when some 30% of those energy drinks feature very different colours and, as Mr Lamb says, those different colours are used by the Applicant itself “to indicate the flavour or quality of the variant, or for aesthetic purposes”? Exhibit GMC-2 to Chambers 1, reproduced below, is a picture taken by Mr Chambers at a Melbourne petrol station convenience store “showing the manner in which the ‘V’ brand products were displayed for sale and the advertisements which were also displayed in connection with the ‘V’ brand product range”, which I accept is generally representative of such displays and which on the face of it well illustrates the question the Opponent is raising:
Moreover, the Opponent asks, how could the consumer perceive the difference between use of a common colour as a trade mark and its use for its descriptive significance or aesthetic qualities, particularly in a market where colour livery has been used for decades by soft drink manufacturers, including energy drink manufacturers such as the Applicant and the Opponent, to refer to flavour or some other characteristic of the beverage? In this regard I accept the Opponent’s evidence that the colour green in particular has been commonly used by beverage manufacturers in Australia for many years to indicate, inter alia, lime flavour. Again, Exhibit GMC-4, shown below, is a copy of a photograph taken by Mr Chambers at a Coles Express supermarket in Melbourne which, I accept, illustrates typical use of the colour green for various soft drinks:
Whilst arguably not directly relevant because it relates to overseas use, I note too in passing that in Mueller 1 at [23] Ms Mueller mentions use by third parties of the colour green for the packaging of energy drinks or other soft drinks which, like the Applicant’s Energy Drinks, contain guarana. A selection is shown in Exhibit RM-38:
In Mueller 2 at [9] the Opponent also points to broad consumer recognition that:
…the colour green has become synonymous with environmental values. A “green” product is generally understood as being a product which has less environmental impact or is “natural”… It is entirely descriptive for example to describe a “natural” energy drink as a “green” energy drink. Indeed, the Italian company HT Health Trade S.R.L. markets its GO&FUN energy drink in Europe in this way. Now produced and shown to me and marked Exhibit RM-42 is the webpage for the GO&FUN green energy drink. Not only is this product described as a “green energy drink”, but it is also promoted in packaging which is predominantly green…
…
Similarly I note that PepsiCo has recently launched a product in Australia branded Pepsi Next which is sold and promoted as having “natural” sweetness in a package which is predominantly green. Now produced and shown to me and marked Exhibit RM-44 is an image of this product.
Exhibits RM-42 and RM-44 are reproduced below. I do note Mr Burley’s point that there is no evidence before me indicating that either of these products were sold in Australia before 2014, being some time after the Filing Date. Nevertheless their example does serve to confirm the point the Opponent makes regarding how the colour green may be perceived by consumers as signifying “naturalness”:
It is also worth noting in this context that the original examiner of the opposed application did raise an objection pursuant to s 39 of the Act that the Claimed Mark “resembles PMS 354, the GREEN colour mark of the NORDIC ECOLABELLING ORGANISATION (mark -9001128) which is an intergovernmental organization.” IP Australia’s file on the opposed application, (a copy of which forms Exhibit GMC-1 to Chambers 2), indicates that the objection was withdrawn when the Applicant supplied a formal letter of consent from the cited organization.
To my mind the evidence relied upon by the Applicant does not adequately answer the Opponent’s questions as to why, against this background, consumers would perceive the Opponent’s use of the colour green, uniquely, to be use as a trade mark. Nevertheless Mr Burley submitted that I should not take the Applicant’s descriptive or aesthetic use of different colours for the Variants into account when considering s 41(6). His formal submission in this regard was that:
47. Contrary to the Opponent’s contention..., the fact that the Applicant has “variant” products, which are not as saturated with the Mark as “original” V, is beside the point for the relevant legal analysis. The correct statutory question is not what the trade mark applicant has done which does not use the relevant mark, but whether what the trade mark [applicant] has done with the mark is sufficient to render it distinctive. In this context the extensive evidence of use indicates that enough has been done. So too does the survey evidence…
It is convenient to mention in passing that the significance to my findings of the survey evidence to which Mr Burley refers is discussed further below. Dealing firstly with the submission, I believe Mr Burley’s contention as to the relevant statutory question conflates the issue of whether the Applicant’s use of the Claimed Mark has been sufficient for it to have become distinctive, and the issue actually raised by the Opponent, namely whether that use is likely to be perceived by relevant consumers as trade mark use in the first place. In this regard I agree with the Opponent that on the face of it that perception would surely be influenced by a consumer’s experience of how other traders in relevant beverages had for many years used colour and by the Applicant’s own use of colour for the Variants. Indeed, as the Full Court in BP said at [77], cited by Mr Burley and reproduced in full at paragraph 71 above:
Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade.
[My emphasis added]
The Full Court then went on to say (at [78]):
It is necessary, therefore, to examine the evidence of the use by BP of colour before 1991, and before 1995, to assess whether, objectively, the use of colour (identifying what colour or colours) would be understood in the context of the trade and the surrounding circumstances to have been used so as to indicate a connection in the course of trade between the product or service and the person using the mark, in the respects claimed in the application. [My emphasis added]
Nor does it strike me as any answer simply to assert, as Mr Donald does at [11] of his declaration, that “…the evidence shows that other beverage manufacturers use colour for decorative, functional or aesthetic purposes. Such use is in contrast to the Applicant’s manner of use of the colour mark GREEN.” The question is, how or why would the consumer perceive this essential difference, particularly when the Applicant itself uses different colours for the cans, labels and packaging of the Variants in the essentially identical manner it does with the Claimed Mark? The use of different colours for the Variants presumably helps consumers easily to differentiate each of the Variants from each other, so they can quickly select the flavour or ingredient of the Variant they want. From the consumer’s point of view, however, the Applicant’s use of green essentially has the same significance; it effectively enables the consumer easily to distinguish (what I understand to be) the Applicant’s “original formula” energy drink from each of the Variants.
I thus cannot agree with Mr Burley’s submission that, “In this context the extensive evidence of use indicates that enough has been done.” I note rather Ms Ryan’s submission that:
29. [The Applicant’s] unit sales figures and advertising spend are substantial: Lamb 1 [11] and Annexure D. However, as Jacobs J pointed out in British Sugar Plc v James Robertson & Sons Ltd:[13]
It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader. This is all the more so when the mark has been used in conjunction with what is obviously taken as a trade mark.
[13] [1996] RPC 281 at 302.
Ms Ryan emphasized Jacob J’s last sentence above in going on to submit that the prominence of the distinctive V logo on all of the Applicant’s Energy Drinks, packaging and promotions suggested consumers were “more likely to remember/ask for the product as ‘V’ rather than ‘the drink in the green packaging’.” She continued (with original footnotes retained):
31. The presence of a memorable and distinctive trade mark (such as the [V logo]) has had the effect of denying trade mark registration to colour mark applications in Multix Pty Ltd[14] [“Multix”] and Re Notetry Limited.[15] [“Notetry”]
32. In Multix the Hearing Officer, after quoting the above passage from British Sugar, said:
This, I believe, applies equally to the use of ordinary colours as an aspect of packaging in a field where it is common to use coloured packaging to attract attention to the goods. Here the question is whether the use of red colouring on the applicant's packages, which also carry words that are obviously trade marks, has resulted in the red colouring coming to denote the mark of the applicant. As Jacob J points out "merely its use, however substantial" is not enough to show that.
33. In Re Notetry Limited the Hearing Officer said:
A major factor in the average purchaser not recognising the two colours as a badge of origin, lies in the fact that the word mark DYSON is always used on the goods in conjunction with the colours. I believe that this word, rather than the colours of the material of which the goods are made, would be more readily understood by consumers as identifying the source of the goods. It is not uncommon for traders to use more than one trade mark on goods. Examples can readily be seen around us, such as HOLDEN and COMMODORE for motor vehicles, and SANITARIUM and WEETBIX for breakfast cereals. However, if one mark overwhelms the other, then it is more likely than not that the second mark will not be identified by the purchasing public as being a trade mark. This could occur where the "less recognisable" mark is descriptive of the goods or where it is linked to a function of the goods.
34. This is the position in the present case. In all instances where the colour green (of whatever shade) appears in the Applicant’s evidence, the highly distinctive [V logo] also appears. The [V logo] would be pronounced “V” by consumers and is how they would ask for the beverage. The [V logo] overwhelms the colour green which, it is submitted, would be seen by consumers as merely the colour of the packaging or labelling of some of the Applicant’s products.
[14] [1999] ATMO 36 (16 April 1999) - application for the colour red as the predominant colour on packaging.
[15] [1999] ATMO 24 (23 March 1999).
Mr Burley countered that in the supermarket setting:
The extensive use of the colour green on product packaging (and on shelving units etc) is such that an ordinary consumer could, from a distance look down an aisle (or cast his or her eyes over a refrigerator unit) and immediately recognise the Applicant’s products without being close enough to discern the [V logo]. The [Claimed] Mark becomes a flag or marker by which the consumer is guided to the product.
However, as the evidence shows, other traders with products in the beverage aisle, including energy drink manufacturers such as the Opponent, commonly use the colour green for its descriptive significance or aesthetic appeal. Presumably that use would similarly “become a flag or marker by which the consumer is guided to the product”, but that does not on the face of it lead to the conclusion that this use of the colour green by other traders is perceived by consumers as use as a trade mark uniquely associated with one particular trader.
Mr Burley also referred to the Full Court’s decision in BP , particularly at [86]-[87], where “the Court considered whether the colour green had been used as a trade mark independently from (a) the colour yellow and (b) the BP livery.” After describing a particular example of the applicant’s use, the Court continued:
[87] This context makes clear that BP had used green and yellow (or gold) as a combination of colours (often against a white background) for many years as its corporate colours to identify BP and to distinguish its services and products from those of other oil companies. In that context, and as part of that combined usage of colours, green was an important part of its get-up and in that way part of the method of identifying and distinguishing BP products and services. We do not see the colour green, however, as having been used, separately, as a trade mark. Nevertheless, as a prominent element of the colour scheme of BP, the colour green would no doubt be capable of founding a mental association with BP if used alone, depending on the context.
[Mr Burley’s emphasis retained]
Mr Burley submitted that “the language of the Court…makes clear [three] propositions”:
55. First, use of colour on livery is capable of being trade mark use, even when it is used in conjunction with a separate trade mark (i.e. the [V logo] or in BP’s case, the “prominent” BP logo). As the extracts above make clear, the Court did not regard the presence of the BP logo as detracting from use of colour as a trade mark.
56. Second, the Court considered that the consistent display of “corporate colours” to identify BP was sufficient use to demonstrate “trade mark use” for the colours green and yellow together. As the Court stated at [87], BP had used green and yellow “as its corporate colours to identify BP and to distinguish its services and products from those of other oil companies” and “green was an important part of its get-up and in that way part of the method of identifying and distinguishing BP”.
57. Third, the Court recognised that had green been used alone (without yellow) the colour “…as a prominent element of the colour scheme of BP the colour green would no doubt be capable of founding a mental association with BP”. [Mr Burley’s emphasis retained]
58. The analysis in BP is analogous to the use of green by the Applicant in this case, as established by the Applicant’s evidence.
I agree with Ms Ryan, however, that rather than assisting the Applicant, the decision in BP in fact shows how difficult it is to establish that a single colour is functioning as a trade mark in its own right when, as in that case, it has generally been used in conjunction with another colour. So too when, as in both BP and the present matter, the colour has invariably been used in conjunction with a separate, distinctive trade mark which itself on the face of it distinguishes the trader’s goods or services. The Court in BP accepted that the colour green, in the context of its use in combination with other elements, “was an important part of BP’s get-up,” but it did “not see the colour green, however, as having been used, separately, as a trade mark.” The Court’s observation that “the colour green would no doubt be capable of founding a mental association with BP if used alone, depending on the context” takes things no further since, as in BP, the evidence in the present matter does not show use of the colour green alone in any context.
I accept that the colour green is a significant element of the get-up of some 70% of the Applicant’s Energy Drinks, just as the Court accepted it was a significant element of the get-up of BP’s service stations. When considering whether such an element forming part of the get-up is also being used independently as a trade mark, however, I note that the Court in BP went on to caution at [82]:
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: compare British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 302. [The opponent] 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 [its] goods and services. We agree with this submission.
Mr Burley’s submission discussed earlier that in the supermarket setting the colour green is functioning as a trade mark because it “becomes a flag or marker by which the consumer is guided to the product” should I think be considered in this light. In this regard the Court in BP went on at [104] to say:
The fact that from a distance the predominant green of the colour of the service station (in particular the fascias of the canopy and buildings and any pole sign) would be noticed, and would assist the motorist in identifying the existence of a BP service station, is not sufficient to transform the use of green predominantly with yellow into the use of green as a trade mark. The fact is that the fascias had yellow logos and marks prominently placed on them, the main identification signs had the green and yellow logo and mark, as well as yellow script, the price boards had a green background and yellow writing, the pumps and spreaders had yellow logos and marks.
As regards Ms Ryan’s reference to the Multix case, where the applicant was attempting to register a mark consisting of the colour red as the predominant background colour on the packaging of goods in Classes 6 and 21, Mr Burley submitted the present matter was distinguishable. As he put it:
59. …In that case the Delegate noted that the words on the Multix packaging were “primary identifiers” of the brand and the red colour was only a subsidiary feature such that it was difficult to demonstrate trade mark use. For the reasons discussed above, the [Claimed] Mark is not a “subsidiary feature” of the get up of V energy drinks but a key component (and a component that makes the product recognisable without recourse to the [V logo]). The present case is more analogous to the Verve Clicquot Ponsardin, Maison Fondee en 1772’s Application (1999) 45 IPR 525 at 531-2. The Applicant also points to the results of the survey discussed further below to demonstrate that the [Claimed] Mark is used to identify the Applicant’s products independently of the [V logo].
I do not agree with Mr Burley that Multix is distinguishable from the present case for the reasons claimed. 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. As in Multix, I think rather that consumers would perceive the distinctive V logo, which (unlike the Claimed Mark) appears on 100% of the Applicant’s Energy Drinks, packaging and promotions, as the “primary identifier” in this trade mark sense. As a result of the Applicant’s advertising and promotional activities as shown in the evidence, I think the colour green would simply be perceived as part, albeit an important part, of the Applicant’s corporate get-up, and the consumer would most likely view its use as part of the get-up of around 70% of the Applicant’s products in this light.
I likewise agree that Ms Ryan’s citation of the decision in Notetry, which I believe is on all fours with the decision in Multix, is well taken.
On the other hand I do not think that the Verve Clicquot decision is analogous, as Mr Burley suggested. There the Hearing Officer concerned was prepared to accept a shade of the colour orange “when used as the colour of a label” for “champagne; sparkling wines.” However, it was an ex parte matter, not an opposition, as Ms Ryan noted, and he was satisfied acceptance for registration was appropriate in view of the applicant’s consistent use, in a somewhat rarefied field, over many decades and because of the unchallenged evidence in “the declarations by the impressive array of wine experts marshalled by the applicant” attesting to the mark’s distinctiveness.
This leads me now to a consideration of the survey evidence relied upon by the Applicant, said to be reliable and objective in establishing that for “a substantial number” of relevant consumers the Claimed Mark was distinctive of the Applicant’s Energy Drinks by the Filing Date. The survey was conducted at the Applicant’s request in January 2015 by a research and consulting firm (“the Survey”). Garreth Chandler has been Managing Director of that firm since establishing it in 2010 and Mr Chandler’s two declarations outline the Survey’s methodology and results. He explains that the 1,076 participants whose responses were ultimately sampled were selected from amongst a potential pool of “over 1.4 million active consumers in Australia, all of different ages, genders and locations” who were registered with an online data research organization. The 1,076 participants were the people who had responded positively to emailed invitations from that organization to take part. The participants then completed the Survey online. As Mr Chandler explains, the responses were then winnowed further in that only the responses from those participants who had answered yes to a pre-survey question confirming they had purchased an energy drink product in the previous four weeks were collated and analysed:
In order to conduct a survey which is representative of a particular target audience, all participants of the Survey are asked whether they have undertaken any or all of a range of carefully selected activities in the last week. The subset of those who had purchased an energy drink product in the last four weeks was used as the basis for analysis on this study because this is the consumer market to which the product relevant to the Trademark Application pertains.
In subsequently analyzing the results, Mr Chandler says “the sample was stratified” so as to be representative of the adult population of Australia taking into account State, age and gender.
The Survey contained six questions, but it is the responses to the first two of these which were at the heart of the parties’ submissions. Question 1 is reproduced below:
Ql COLOUR AND BRAND ASSOCIATION
Please look at each colour[16] and indicate if you identify it with one or more brands of drink that you could buy at a convenience store or supermarket?
[16] I note that 376c GREEN was used for the green swatch for this question and that the order in which the four colours were presented to individual participants was randomised.
1. Green 2. Blue 3. Yellow 4. Black
Exhibit GC2 to Chandler 1 indicates that of the 1,076 original respondents, the percentage who said they identified a particular colour with a brand of drink was:
Green 50% (530 people)
Black 47%
Blue 45%
Yellow 42%
100. Only those respondents who said they did identify a colour with one or more brands of drink were then asked to go on and complete the Survey, with question two being:
Q2 UNPROMPTED BRAND ASSOCIATION
You indicated that you identify this colour with a brand of drink. Please Type the name of the brand or brands below. If you have more one [sic] brand use a separate box.
1. Green
2. Blue
3. Yellow
4. Black
Brand 1 Brand 2 Brand 3 Other
101. The 530 people who had nominated green in response to question 1 accordingly went on to question 2. The brands they named in answer to that question are set out on a percentage basis in Exhibit GC3 to Chandler 1, summarized below:
V 48% (around 254 people)
Sprite 10%
Gatorade 9%
Mountain Dew 8%
Powerade 5%
Lipton [Green tea] 4%
Monster 3%
7-up 3%
Mother 2%
Coca Cola 1%
Other 28%
102. There were several matters raised during the evidence stage of proceedings, (with the Survey being both the subject of the Applicant’s successful application to file Chandler 2 as further evidence and of the Notice to Produce issued at the Opponent’s request), and at the hearing itself, touching on the Survey’s methodology and probative value. I do not however believe it is necessary to canvass these here. Even accepting the Survey results reproduced above at face value, I do not believe they assist the Applicant. What they indicate to me is that after a selection process aimed at limiting potential respondents to people of the target age who had consumed an energy drink in the previous four weeks, fully half of those people did not identify 376c GREEN with any brand of drink. Of the 50% who did, less than half (48%) nominated the Applicant’s Energy Drinks. Moreover the Survey was conducted some two and a half years after the Filing Date and Mr Chandler says in Chandler 1 that:
Exhibit GC4 shows the percentage of consumers that identify Pantone 376C with “V” as a function of how long they have been consuming energy drinks. The result shows a strong correlation between duration of consumption and identification with green. In other words, the identification of Pantone 376C with the Applicant’s Energy Drink appears to grow over time as consumers become more familiar with the product.
103. Taking the results into account, I agree with Ms Ryan’s submission that:
35. However, the best evidence to establish that the [Claimed] Mark does not distinguish the Applicant’s energy drinks is the Applicant’s survey evidence.
36. In the Multix case just over 50% of the 461 consumers surveyed associated the brands Comalco and/or Multix with having a red pack. The Hearing Officer commented that, if the red colouring was really serving as a badge of origin, she would have expected far in excess of 50% of the relevant purchasers to associate a red pack with the applicant.
37. In the BP case 85% of people surveyed associated the stimulus (a picture of a service station coloured substantially in green) with the BP brand. The Full Court said at [117]:
That association does not lead to the conclusion that the use of colour from 1989 has included use, as a trade mark, of either green alone, or green as the predominant colour accompanied by any other colour. The mere fact that consumers associate green with BP does not, in our view, satisfy the test of distinctiveness required by s 41(6). Evidence of promotion and use does not, without more, demonstrate distinctiveness: see Blount v Registrar of Trade Marks at 61G [sic], citing with approval Jacobs J in British Sugar plc v James Robertson & Sons Ltd at 286 and 302; and Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd at 101 [13]. It is necessary for BP to establish that the association is referable to the use of the mark as a trade mark.
104. Mr Burley did submit that the Survey was distinguishable from those in Multix and BP because there respondents had been asked whether they “associated” the colour in question with the respective applicants’ goods or services, something apparently criticized by the Full Court in BP in the above quote from [117]. In the case of the Survey, however, the word “identified” was used instead. Mr Burley argued:
The term “identify” used in Question 1 is considerably stronger than “associate”. To “identify” with a particular brand is effectively to consider that the colour is synonymous with the brand.
In BP at [117] the Full Federal Court’s concerns were directed at the survey’s findings that there was only a “strong association” in the minds of consumers between green and BP, the Court considering that the survey did not establish that the association was referable to use as a trade mark (see also criticisms regarding “association” in Multix and Chocolaterie Guylian). This is not the case in Mr Chandler’s survey.
105. I am unable to agree with this submission. As I mentioned at the hearing, the distinction between the phraseology “strongly associate with” and “identify with” strikes me as quite subtle when considered from the Survey respondents’ point of view and I am not satisfied it is correct to assume the change in the verb used would lead to significantly altered responses. I do not in any event think that the Full Court’s concerns about the survey in BP were because the survey questions used the terminology “strong association.” Rather, it appears to have been because as it said at [117], “The mere fact that consumers associate green with BP does not, in our view, satisfy the test of distinctiveness required by s 41(6).” On the face of it I believe the Court would have made the same essential observation whether the word “associate” or the word “identify” had been used in the survey on which it was commenting.
106. As to the fact that of the original Survey respondents, all in the target age and having purchased an energy drink in the previous four weeks, 50% did not identify 376c GREEN with any brand of drink, and that, of the remaining half, less than half again nominated the Applicant’s “V” brand, Mr Burley submitted:
70. …the standard of 100% recognition (or something similar) is not a requirement of s 41(6) of the Trade Marks Act. The relevant question is to be approached from a common sense perspective…
71. The applicant submits that the relevant question is whether a substantial number of persons, being familiar with the applicant’s products to which the mark in issue applied, would consider that [the Claimed Mark] is [a] sign (within s.17 of the Act), then sufficient evidence of use has been established. The position is analogous to the threshold of evidence required for passing off, or to found a cause of action for misrepresentation under the Australian Consumer Law (or earlier Trade Practices Act), namely, whether a substantial number of persons would have an awareness of the relevant trade mark use; Siddons Pty Ltd v The Stanley Works Pty Ltd (1991) 29 FCR 14 at 20 (Wilcox and Heerey JJ) and at 23 (Burchett J); Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553 at 581 (Beaumont J).
…
73. Overall, [unlike the survey in Multix], the [S]urvey focused itself on removing other stimulus to answer the question whether Pantone 376C is being used as a trade mark…
74. The results of the survey demonstrate that one in four consumers of energy drinks think of V energy drinks when they see Pantone 376C, even when they are not prompted by any packaging ‘cues’ or other logos etc…
107. Again, I am unable to agree with this submission. Firstly, the Survey only considered responses from people who had purchased an energy drink in the previous four weeks and were therefore assumed to have some familiarity with energy drinks already. As mentioned, Mr Chandler explains this was “because this is the consumer market to which the product relevant to the Trademark Application pertains.” However, as discussed, the Applicant elsewhere says that the target market is primarily (all) “18-25 year olds, but the key consumption base includes males and females up to their mid-thirties.” The original 1,076 participants selected for the Survey were thus not on the face of it representative of the actual target market as a whole for energy drinks.
108. I agree with Ms Ryan that one would expect Survey participants so selected to have more awareness of the use of the colour green in the energy drink market than others in the target market who had not consumed an energy drink recently or, perhaps, at all. That only some 24% of the original 1,076 Survey participants said they “identified” 376c GREEN with the Applicant’s “V” brand despite their presumed familiarity with energy drinks, then, does suggest a smaller percentage of the relevant target market as a whole would do so.
109. Conversely, as Ms Ryan also highlighted, what that 24% figure also means is that despite their presumed familiarity with energy drinks some 76% of the original 1,076 Survey participants did not identify 376c GREEN with the Applicant’s products. Indeed, some 26% of the original 1,076 (276 people) “identified” it with the brands of other beverage manufacturers. Again, presumably those percentages might be higher still if the perceptions of the target market as a whole had been sampled.
110. Moreover I do not think I can just assume, as Mr Burley urged me to do, that “To ‘identify’ with a particular brand is effectively to consider that the colour is synonymous with the brand” and that this therefore means that the colour is being perceived as use as a trade mark. In this regard I agree with Ms Ryan’s submission that the Survey does not address this issue.
111. In summary I am not satisfied that the Survey establishes the Claimed Mark had become distinctive of the Applicant’s Energy Drinks by the Filing Date.
112. Nor, as discussed, has the Applicant otherwise established that the Claimed Mark had become distinctive in my view. I accordingly find that the Opponent has established its ground of opposition based on s 41(6) of the Act.
Decision
113. Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:
…the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in
respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the
application was opposed has been established.
Note: For limitations see section 6.
114. I have found the opposition to be successful on the ground raised pursuant to s 41(2) of the Act. If I be wrong in that assessment then I have further found that the Claimed Mark, which the Applicant concedes has no inherent adaptation to distinguish energy drinks, does not in any event qualify for registration pursuant to s 41(6) of the Act. I accordingly refuse to register trade mark application number 1496541.
Costs
115. In the event of success, Ms Ryan sought costs on the Opponent’s behalf. As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Regulations.
Michael Kirov
Hearing Officer
Trade Marks Hearings
22 June 2016
19
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