For over a decade Frucor has been the registered owner of a valuable colour trade mark for a shade of green (Pantone shade 376C).  This is the colour used on its distinctive V energy drink cans and bottles.

Energy Beverages Limited (part of Monster Energy) filed two applications attacking Frucor’s colour green trade mark registration (795206). The matter went to a hearing in November 2019. In decisions issued in May 2020, both applications were dismissed.

The removal application

The first application was for removal of the trade mark on the ground of alleged non-use – even though Frucor’s V product had been continuously on the market. A key issue concerned the representation of the mark on the register. The application filed by Frucor had attached a colour swatch of the colour. In addition the written description of the mark on the register stated:

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.

It became clear that, when IPONZ had moved to a completely digital operation in 2009, it had simply scanned a copy of the colour swatch (a duplicate of which Frucor was able to produce to the hearing.) The IPONZ scan produced a different and inaccurate colour on the register. Energy Beverages argued that there had been no use of the different colour green now recorded on the register.

Assistant Commissioner Aldred held that the written explanation on the register prevailed (at [51]). Therefore the inaccurate colour shown on the IPONZ register was not the relevant standard to apply when assessing the claimed non-use.

After reviewing the evidence, the Assistant Commissioner was satisfied that there had been use of the trade mark on V cans (at [75] and [78]).

Energy Beverages also argued that 376C and the designation C  purely denoted use on coated paper, which meant that the colour green could never be used on cans which have a metallic substrate. As a result there could be no use. Assistant Commissioner Aldred  concluded at [84] that the trade mark required the application of a colour that gave the appearance of 376C, as that colour was demonstrated by the swatch attached to the application (regardless of the substrate to which it is applied).  That use had been shown.

The declaration of invalidity application

The second application attacked Frucor’s registration on the basis that it was contrary to New Zealand law because the sign applied for did not qualify as a “trade mark” and (a novel argument) that registration was “contrary to the law of Equity”.

A key factor was that Frucor’s mark had been on the register for 9 years and s 75 of the Trade Marks Act 2002 precludes attacks on the registration after 7 years except on very narrow grounds. Assistant Commissioner Aldred held that the application was an impermissible attempt to evade the s 75 “indefeasibility”.

A particular ground or attack had been a claim that the wording of the registration “applied as the predominant colour to the goods, their packaging or labels” was defective for want of precision. The decision found that the written description was sufficiently clear in meaning to be capable of graphical representation and therefore registration (at [56]).

Andrew Brown QC of Bankside Chambers acted for Frucor.

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