Colour trademark applications: Include a colour swatch or not?

14 September 2023

Colour trademark applications: Include a colour swatch or not?

Photo: Frucor Suntory, Pantone

Elena Szentiványi, Director, Henry Hughes Intellectual Property, Wellington

When filing a colour trademark, applicants should consider whether it is necessary to include a colour swatch.

“It is common knowledge that colours look different on different screens and applications. It is preferable to rely on a verbal description with reference to a known colour code system to avoid ambiguity or imprecision in the scope of the trademark,” said Elena Szentiványi, director at Henry Hughes Intellectual Property in Wellington.

According to Szentiványi, this is the key takeaway from the recent trademark case involving New Zealand-based and Australian-based beverage companies Frucor Suntory and Energy Beverages (EB), respectively. The court ruled in favour of Frucor Suntory, which sought to rectify an error in the trademark registry concerning the colour mark for its energy drink V, a move opposed by EB, the owner of the Mother line of drinks.

The two companies had been in dispute due to colour issues in product packaging. Frucor Suntory’s V and EB’s Mother Kicked Apple Energy Drink sported the same green colour in their cans. Accused of committing trademark infringement, EB took its competitor to court to challenge the colour mark’s validity.

According to EB, the green shade used in V’s cans is different from the colour indicated in the official online trademark listing for the beverage, which was an error made by the Commissioner of Trade Marks. When the office embarked on digitization, officials merely scanned the colour swatch that was part of the August 2008 trademark application for V. Unfortunately, the colour did not come out the same.

What worked to Frucor Suntory’s advantage was the code Pantone 376C, which was indicated in the trademark listing as the colour of V’s cans and bottle labels.

In the legal tussle’s latest episode, EB opposed Frucor Suntory’s attempt to correct the mistake in the trademark registry. However, the court sided with Frucor Suntory and ordered the correction for its colour trademark be made.

Szentiványi further explained that the court’s decision “provides a detailed analysis of the applicability of section 76, which allows rectification or correction of the Register, and section 77, which prohibits the owner of a registered trademark from altering the registered trademark after its action date of registration.”

She added: “Frucor Suntory had applied under section 76 to rectify the register by correcting the error and Energy Beverages intervened to argue that section 76 precluded the requested change to the trademark. The court considered that the error could be corrected under section 76 and that section 77 did not limit the application of section 76 in this scenario.”

- Espie Angelica A. de Leon

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