In this edition of From the Bench, Allens Associate Anna Conigrave reports on the mixed news for the owners of colour trade marks. In Europe, the validity of Louboutin’s registered trade mark for the colour red applied to the soles of high heels has been upheld. Meanwhile, in Australia, Frucor’s application to register a green colour mark in relation to energy drinks has been refused.
In 2012, Frucor Beverages Limited, the maker of ‘V’ energy drinks, applied for registration of a green colour mark in relation to energy drinks. The mark was defined by a description and graphic representation. The description was of ‘Pantone 376C’, referred to by Frucor as ‘V’ Green. However, the representation provided to IP Australia was of a different shade of green than that actually used by Frucor.
The Coca-Cola Company successfully opposed registration of the mark; Frucor appealed to the Federal Court. Justice Yates heard the appeal and considered, among other things, whether the mark was capable of distinguishing Frucor’s energy drinks or should be rejected pursuant to s 41 of the Trade Marks Act 1995 (Cth).
Justice Yates kicked off his reasons by noting that the mark is not inherently adapted to distinguish Frucor’s product. His Honour went on to say that the relevant question is, therefore, whether the mark was used by Frucor before the filing date to such an extent that the mark does in fact distinguish Frucor’s energy drinks. In answering that question, Justice Yates noted that it is use of the mark applied for, and not any other mark, that is relevant. His Honour reasoned that, because the mark applied for by Frucor was ambiguously defined, Frucor could not establish use of the mark, and registration of the mark should be refused.
Justice Yates then turned his mind to the hypothetical scenario in which the mark was unambiguously defined as ‘V’ Green. His Honour said that the questions relevant to that scenario were: 1) whether Frucor used ‘V’ Green as a trade mark in relation to energy drinks; and 2) if so, whether the use was such that ‘V’ green distinguishes Frucor’s energy drinks. In relation to the first question, His Honour found that, while Frucor used ‘V’ Green extensively in relation to energy drinks, ‘V’ Green did not function as a trade mark. This was because: 1) consumers would have regarded Frucor’s ‘V’ logo as the badge of origin for Frucor’s ‘V’ energy drink products; and 2) Frucor used colour descriptively, to denote differences between ‘V’ energy drink products (eg, ‘V’ Green denoted the core product, and silver denoted the sugar-free product).
Justice Yates dismissed Frucor’s appeal with costs.
In 2013, Christian Louboutin commenced proceedings in the Netherlands against Dutch shoemaker Van Haren Schoenen BV for infringement of Louboutin’s registered trade mark for the colour red applied to the soles of high-heels.
Van Haren argued that Louboutin’s mark was invalid on the basis of a European law that prohibits the registration of marks consisting exclusively of certain shapes. The Dutch court was unsure of how to apply the law, so referred the matter to the European Court of Justice (ECJ).
The ECJ found that Louboutin’s mark does not cover a specific shape of high-heel sole, and that, in any event, the mark could not be said to consist ‘exclusively’ of a shape since the main feature of the mark is a colour. The red sole mark therefore remains valid, and the Dutch proceedings will now continue.
The Frucor decision serves as a warning to the owners of colour trade marks – to avoid being browned off, owners should ensure that their marks are clearly defined in trade mark applications (including by reference to the correct pantone) and used sufficiently as trade marks before the filing date. This requires a level of consistency similar to that employed by Louboutin.