Trade Marks – Trade Marks Act 2002 – colour trade mark – application for declaration of invalidity – claim that registration comprised a sign that did not qualify as a trade mark due to sign being ambiguous – invalidity application brought almost nine years after deemed date of registration – invalidity application dismissed because of validity after seven years – interpretation of registered trade mark – wrong colour uploaded to register – written description of trade mark prevails.
Energy Beverages LLC v Frucor Suntory New Zealand Ltd  NZCA 536 (Cooper, Brown and Courtney JJ)
Frucor Suntory Limited is the manufacturer of the ‘V’ energy drink. Energy Beverages Limited is the manufacturer of the ‘Monster’ energy drink.
Frucor Suntory registered a trade mark in 2012, comprising a green colour alongside a description of the colour as Pantone 376C. The physical colour on the application did not match the description.
Both Frucor Suntory and Energy Beverages market their energy drinks in containers coloured partially in pantone 376C green. Frucor Suntory maintained that Energy Beverages’ use of Pantone 376C on its products infringed Frucor’s trade mark and indicated it would bring court proceedings for infringement.
In response, Energy Beverages sought to revoke and deem invalid Frucor Suntory Limited’s registered trade mark nine years after the trade mark was registered. The declaration of invalidity was sought on the basis that the use of the word ‘predominant’ in the written description meant what appeared on the register was not a ‘trade mark’ under s 5 of the Trade Marks Act 2002 because it was too imprecise to constitute “a sign….capable of graphic representation”. The revocation was sought on the basis that although Frucor Suntory was using Pantone 376C, it was not making use of the shade of green as shown on its registered trade mark.
Both applications were dismissed by the Assistant Commissioner of Trade Marks and Energy Beverages subsequently appealed to the High Court. The appeal was dismissed and Energy Beverages appealed to the Court of Appeal.
The Court of Appeal upheld the High Court’s decision, dismissing both of Energy Beverages’ claims.
Given that Energy Beverages Limited made the claim nine years after registration, Frucor Suntory relied on s 75 of the Trade Marks Act 2002, which creates a presumption of validity for a trade mark seven years after the deemed date of registration unless there is evidence of fraud or invalidity.
Energy Beverages could not prove Frucor Suntory’s trade mark was invalid as the trade mark was registered with a specific Pantone number and was accompanied by a written description of the trade mark on the register that correctly identified the Pantone shade of the trade mark.
Energy Beverages’ application for revocation was also rejected. This was because of an error by the Intellectual Property Office of New Zealand when registering the trade mark, causing confusion as to which shade of green was actually protected. The court held that Frucor Suntory should not be held responsible for this error and, as a result, non-use of the trade mark could not be proven.
Applicable principles – trade marks’ similarity and distinctiveness – trade mark infringement – registration of trade marks – description of trade marks – use of trade marks – revocation for non-use.
Held: Energy Beverages’ appeal is dismissed and Frucor Suntory’s trade mark registration is deemed valid. Frucor Suntory’s trade mark could not be seen as invalid as it included an accurate description of the colour in the trade mark. Further, the trade mark could not be revoked for non-use as the wrong colour was uploaded due to an error by Intellectual Property Office of New Zealand.