Frucor Successful with Nifty Shades of Green Defence

In 2020 NZIPOTM 5 Frucor Suntory New Zealand Limited v Energy Beverages LLC a discrepancy between the IPONZ register representation of Frucor’s colour mark and the accompanying description and the mark as used was held not to justify revoking the mark for non-use.

In August 2008 Frucor applied to register a single colour mark with the following description - 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. The representation on the register is as shown here. In June 2012 the mark was registered on the basis of acquired distinctiveness.

In June 2017 Energy Beverages filed a non-use application on the basis that the representation on the register does not match either Pantone 376C or the mark as used. The depiction of Pantone 376C in the Pantone colour system is as shown here.

Evidence was led to the effect that it is not possible to have an exact Pantone colour system match for colours printed on metallic cans as the Pantone colour system does not take into account colour printed on such metallic substrates. Further, the grey of aluminium cans and the thin ink film can change the apparent colour, and even a skilled printer cannot reliably print a Pantone colour match on aluminium cans. Frucor said it chose Pantone 376C as the closest match, where the ‘c’ suffix refers to the colour being printed on coated or gloss paper.

Frucor also argued that the process of scanning, uploading, downloading and printing colour marks can lead to loss of integrity with respect to the original representation. IPONZ no longer retained the paper file as these are destroyed following its digitization for the purposes of IPONZ’s online system. However, the trade mark attorney who filed Frucor’s application gave a declaration that included a copy of the application filed which had a square sample that had been cut from a metallic label stapled to it as shown here.

The Assistant Commissioner accepted the trade mark attorney’s evidence and agreed that the mark should be defined by the written description rather than the image on the register, particularly given that the written description includes the phrase “as shown in the representation attached to the application”. The Assistant Commissioner accepted that the representation on the register is likely the result of IPONZ’s digitization process. The Assistant Commissioner rejected Energy Beverages’ argument that the lack of a Pantone system for metallic substrates means that Pantone 376C cannot have been used on the cans, finding the mark as used sufficiently similar to Pantone 376C taking into account that it is on a metallic substrate. In this regard it was held that the perception of the average consumer is more important than that of an expert in printing processes.

The further decision 2020 NZIPOTM 6 Frucor Suntory New Zealand Limited v Energy Beverages LLC involving the same mark also issued on the same day and involved the issue of whether the mark qualifies as a trade mark and whether it is contrary to the law of equity.

Energy Beverages argued that the mark does not qualify as a trade mark as the use of the word ‘predominant’ in the written description means that it lacks certainty or precision in that it allows for a multitude of forms of representation and so can cover multiple signs with different permutations, presentations and appearances. They cited a UK Court of Appeal decision which found the use of the word ‘predominant’ in the written description to lack certainty or precision.

Frucor countered by noting that its mark had been registered for more than 7-years at the date of the invalidity application and so is presumed to be valid unless it falls within the exceptions mentioned in section 75. Amongst the exceptions to the presumption of validity is that the mark should not have been registered on account of the absolute grounds for objection in section 17. However, Frucor argued that Energy Beverages objection does not fall within the exceptions mentioned in section 75 as correctly understood it falls under section 18(1)(a) as it amounts to arguing that the sign is not a registrable trade mark.

The Assistant Commissioner accepted Frucor’s argument, finding that the absence of section 18 provisions in the exceptions to the section 75 presumption of validity was deliberate on the part of the legislature. Similarly, the Assistant Commissioner found that Energy Beverage’s contrary to the law of equity argument is also precluded on account of not falling within the exceptions to section 75.

However, in case she is wrong regarding the ‘not a registrable trade mark’ objection, the Assistant Commissioner went on to hold that the use of the word ‘predominant’ in the written description does not necessarily mean that the mark lacks clarity or precision. On the facts of the case the Assistant Commissioner held that Frucor’s registration is sufficiently clear and not defective for want of precision, and that the most memorable or main colour that catches the eye of reasonable consumers is the appropriate way to understand the use of ‘predominant’ in this context.

Author: Quinn Miller

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