South Africa: Another Colour Fail

Last Updated: 11 October 2016
Article by Gaelyn Scott

Most Read Contributor in South Africa, September 2016

Another day, another failed colour trade mark application. But there may be some lessons to be learned from a recent Australian decision.

The quest to monopolise colour goes on, and we have written on this topic on several occasions. In the latest Australian case on colour trade marks, Frucor Beverages Limited, manufacturer of an energy drink called V, applied to register the colour green as a trade mark for its energy drinks. The company did the right thing, in that it filed a sample and specified the Pantone number, in this case 376C. Coca-Cola, which manufactures an energy drink called Mother, opposed this application, saying that the trade mark was not distinctive or, to use the language of trade mark law, not "capable of distinguishing" the goods of Frucor from the goods of others.

The opposition succeeded. One of the issues that was raised in this matter was that Frucor had made a rookie error – the sample that it had filed wasn't, in fact, for the Pantone number 376C, but rather another shade of green. The registry's decision did not, however, turn on this point. It turned simply on the issue of distinctiveness.

Matters like these are all about evidence. The evidence in this matter showed that the colour green is commonly used by drinks manufacturers to indicate a lime flavour. Coca-Cola argued that it was very relevant that 30% of V energy drinks feature colours other than green Pantone number 376C, and that these other colours are used to indicate the flavour of the drink.

Frucor filed evidence of distinctiveness in support of its application to register the colour trade mark. Frucor's own survey, which had been limited to consumers of the target age and who had bought energy drinks within the previous four weeks, showed that half of the surveyed consumers did not associate green Pantone number 376C with any particular brand. More importantly, the survey was conducted two and a half years after the trade mark application was filed. So, the survey certainly didn't prove that the colour had become distinctive of Frucor's product by the date on which the trade mark application was filed.

We've considered Australian colour trade mark cases in previous articles. We saw that an application filed by BP for the colour green (in this case, Pantone number 348C) for both petroleum products and service stations failed on the basis that the company had not proved distinctiveness. We discussed a case where Telstra, the producer of the Australian Yellow Pages, failed in a passing-off claim against a company that uses the colour yellow in relation to print directories. The court in that case held that the colour yellow is generic in the context of directories, and that it simply signifies a directory rather than a particular company's directory.

Looking elsewhere, it's hard to get a clear picture on the state of colour trade marks. The European authorities say that, in order to even get beyond first base, a trade mark application for a colour must be "clear, precise, self-contained, easily accessible, intelligible, durable and objective". Specifying a pantone number seems to be the way of getting over this hurdle, but proving distinctiveness is very difficult. Some applications get through to registration, such as the colour orange in the name of the champagne maker, Veuve Clicquot, but many seem to fail.

In the UK, Cadbury failed in its attempt to register the colour purple for chocolate. The application was described as comprising the colour Pantone number 2685C "applied to the whole visible surface, or being the predominant colour applied to the whole of the visible surface of the packaging." This matter went all the way to the Court of Appeal, which said that it wasn't sufficiently clear or precise – the use of the word "predominant" seems to have been the main problem. The court went on to say that the registration of such a loosely-worded trade mark would give Cadbury an unfair advantage over its competitors.

As far as we know, there's still no High Court decision on colour trade marks in South Africa, although there is an old (2004) Trade Mark Registry decision refusing an application by Cadbury to register the colour purple for chocolate. In South Africa, trade mark disputes often find their way to the Advertising Standards Authority ("ASA"). The ASA has generally shown a reluctance to grant any form of monopoly to colour – there were cases involving telecommunications company iBurst and the colour orange, and Canderel and the colour combination red and yellow. Recent developments, however, suggest that the ASA might be slightly more open to the idea that colour performs a distinguishing function. Recently, we had a case where the ASA held that SABMiller, manufacturer of Castle Lite beer, had through 20 years of usage, built up an advertising goodwill in the colour combination of silver and green.

So, what about those lessons from the Frucor decision? Well, if you are going to file for a colour trade mark, you must anticipate that there will be objections. Do a survey before filing an application, so that you can hopefully prove that the trade mark was distinctive at the date of filing. It's also possible that colour trade marks will be more difficult to register in some industries than others – in the foods and drinks market, for example, colour clearly performs a descriptive role to describe flavour. It's also quite possible that some colours are simply more difficult than others. The colour involved in this case, green, may well have descriptive (eco-friendly) connotations in a whole range of product areas.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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