FEDERAL COURT OF AUSTRALIA
Frucor Beverages Limited v The Coca-Cola Company [2018] FCA 993
ORDERS
Appellant | ||
AND: | Respondent | |
DATE OF ORDER: |
THE COURT ORDERS THAT:
1. The appellant’s interlocutory application filed on 24 February 2017 be dismissed.
2. The appeal be dismissed.
3. The appellant pay the respondent’s costs of the appeal, including the costs of and incidental to the interlocutory application.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
YATES J:
Introduction
1 This is an appeal from a decision of a delegate of the Registrar of Trade Marks (the delegate and the Registrar, respectively) made under s 55 of the Trade Marks Act 1995 (Cth) (the Trade Marks Act or the Act) in opposition proceedings concerning Trade Mark Application 1496541 (the application or the trade mark application). The application was filed on 15 June 2012 (the filing date).
2 The mark is the colour green defined by a coloured swatch as the representation required by reg 4.2(1)(b) and a description as required by reg 4.3(7) of the Trade Marks Regulations 1995 (Cth) (the Regulations). The description is:
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.
3 The designated goods are energy drinks in class 32.
4 The appellant, Frucor Beverages Limited (Frucor), is the applicant for the mark. The respondent, The Coca-Cola Company (CCC), is the opponent in the opposition proceedings.
5 In this appeal, it is not in dispute that the colour of the swatch accompanying the application is not “Pantone 376c” (or, more correctly, Pantone 376C). The disconformity between the colour of the swatch and the description of the colour as Pantone 376C was a significant issue in the opposition proceedings and remains a significant issue in this appeal.
6 CCC opposed the application on two grounds: first, the Registrar accepted the application on the basis of evidence or representations that were false in material particulars (s 62(b) of the Act); secondly, the mark was not capable of distinguishing the designated goods from the goods or services of other persons (s 41(2) of the Act). The delegate rejected the first ground of opposition, but upheld the second.
7 In this latter connection, the delegate found that the ambiguity in the identity of the mark occasioned by the disconformity between the colour of the swatch and the description of the colour as Pantone 376C was a fatal flaw in the application. He held that, because Frucor had defined the mark ambiguously, the mark was not capable of distinguishing Frucor’s energy drinks. He also opined that s 65(2) of the Act (dealing with the amendment of trade mark applications after particulars of the application have been published) would preclude amendment of either the representation of the mark or the description required by reg 4.3(7). He noted, however, that Frucor had not applied to amend the application.
8 Notwithstanding his finding in relation to the operation of s 41(2) of the Act, the delegate went on to consider other aspects of the application of that provision. In this connection, Frucor did not accept that the mark, as applied for, was ambiguous. It said that the colour of the mark was Pantone 376C, despite the colour of the swatch. It accepted, however, that the mark, if defined as Pantone 376C, was not to any extent inherently adapted to distinguish the designated goods as Frucor’s goods. It thus sought to rely on s 41(6) of the Act (in the form that provision took at the relevant time: see [104] below)—a matter on which it had the burden of persuasion. Proceeding on that basis, the delegate considered the evidence of Frucor’s use of the colour green (accepted to have been Pantone 376C) before the filing date. He found that the evidence did not establish that, before the filing date, Frucor’s use of that colour in fact distinguished the designated goods as its goods in accordance with s 41(6)(a) of the Act.
9 The delegate therefore found that CCC’s opposition succeeded and refused to register the mark.
10 It is convenient to record at this point that two other oppositions have been filed in respect of the application. I understand that the Registrar’s consideration of these oppositions awaits the outcome of this appeal.
11 It is also convenient to record that, on 3 December 2015, Frucor filed a separate application for registration of Pantone 376 as a trade mark for energy drinks in class 32.
The appeal
12 The appeal to this Court is a hearing de novo on the same question that was before the Registrar: Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60 at [14]. The general principles on which such an appeal proceeds are well-known and need not be rehearsed in these reasons.
13 The evidence placed before the Court need not, and in most cases will not, be the same as the evidence placed before the Registrar. The burden remains on the opponent in the proceeding below to satisfy the Court that a ground of opposition has been made out. CCC has that overall burden in this appeal.
14 In its notice of contention dated 29 July 2016, CCC contends that the delegate’s decision should be affirmed on the basis relied upon by the delegate acting under s 41(6) of the Act. CCC also contends that the application should be refused on two additional bases.
(a) First, CCC contends that the description of the mark supplied by Frucor pursuant to reg 4.3(7) extends the specification of the designated goods to the colour of the liquid of the energy drinks, as well as their packaging and labels. CCC contends that Frucor has not established that, prior to the filing date, any of its energy drinks were coloured green (whether “Pantone 376c” or the colour of the swatch). This is a particular elaboration of the opposition based on s 41(2), considered by reference to s 41(6) of the Act.
(b) Secondly, CCC contends that the application should be refused by reason of s 62(b) of the Act because the Registrar accepted the opposed mark on the basis of evidence or representations that were false. This is the ground that the Registrar had rejected. This contention is no longer pressed in the appeal.
15 CCC filed a statement of grounds and particulars of opposition (the statement). The grounds and particulars extend beyond the contentions made in the notice of contention. Frucor does not object to the statement on this basis. The additional ground raised by CCC is that the application does not satisfy s 27(2)(a) of the Act which requires that a trade mark application be in accordance with the Regulations. In this connection, CCC says that the application does not include a representation of the opposed mark that is sufficient to identify it and, further, that the application does not contain a concise and accurate description of the opposed mark, as required by reg 4.3(7). Thus, CCC says, the Registrar should have rejected the application pursuant to s 33(3) of the Act. The statement also includes additional particulars of the opposition based on s 62(b) of the Act. However, as with the corresponding contention, this ground of opposition is no longer pressed in the appeal.
16 In its notice of appeal, Frucor seeks an order that the Registrar be directed to register the mark, provided that the representation attached to the application is amended to show the colour Pantone 376C. Frucor says that, contrary to the view expressed by the delegate, this amendment is allowable under s 65(2) of the Act.
17 On 7 June 2017, the parties filed an agreed statement of issues in dispute. Three main issues are identified:
(a) Is non-compliance with s 27(2)(a) of the Act a “[ground] on which an application for the registration of a trade mark may be rejected”, within the meaning of s 57 of the Act?
(b) Is CCC’s ground of opposition under s 41 of the Act established?
(c) Does the Court have jurisdiction to decide Frucor’s application to amend the trade mark application pursuant to s 65(2) of the Act?
18 A number of sub-issues are also identified. Where necessary, I will detail these sub-issues in later sections of these reasons.
19 On 24 February 2017, Frucor filed an interlocutory application in which it seeks leave to file a further amended notice of appeal. The proposed further amended notice of appeal alleges that the representation of the mark attached to the application for registration can be amended pursuant to s 65A of the Act. Frucor seeks an order that the application be amended in this fashion. CCC opposes leave being granted. It submits that any amendment in reliance on s 65A would be futile because, amongst other things, the Court does not have jurisdiction to make orders based on s 65A. It also raises case management considerations as militating against the exercise of the discretion to permit a further amended notice of appeal to be filed at such a late stage in the proceeding, in light of certain procedural requirements that must be observed when reliance is placed on s 65A. At the commencement of the appeal hearing it was agreed that I should hear and determine the interlocutory application with the appeal itself.
The evidence
CCC’s witnesses
20 CCC read two affidavits affirmed by Rodney Ian Lindsay Cruise on 20 September 2016 and 18 April 2017.
21 Mr Cruise is a patent attorney. In his first affidavit, he produced the file history in relation to the trade mark application. In his second affidavit, he responded to certain paragraphs of Mr Fenwick’s affidavit, Mr Sayers’ affidavit and Ms Peacock’s affidavits (see below). He also gave evidence about the colour of Frucor’s core “V” energy drink.
Frucor’s witnesses
22 Frucor read the following affidavits:
Peter John Lamb, affirmed 24 November 2016;
Andrew Gregory Fenwick, sworn 9 December 2016;
Alistair David Sayers, sworn 8 December 2016 and 19 May 2017;
Susan Joan Peacock, sworn 10 November 2016;
Anna Fae Henderson, sworn 9 December 2016;
Edward Joseph Nader, sworn 8 December 2016;
Lisa Salas, sworn 8 June 2017;
Garreth John Chandler, sworn 30 November 2016, 20 February 2017, and 19 May 2017; and
Timothy Bernard Webb, sworn 24 February 2017.
23 Mr Lamb is a director and the Chief Financial Officer of Frucor. Mr Lamb gave evidence concerning the nature of Frucor’s business with reference to its “V” energy drink product and Frucor’s use of Pantone 376C in relation to the promotion and marketing of that product in Australia before the filing date.
24 At the time he made his affidavit, Mr Fenwick was the Marketing Manager at Frucor. Mr Fenwick gave evidence concerning the marketing of energy drinks in Australia, including the segmentation of energy drinks as a distinct product category. He produced a number of “planograms”. These are documents created by retailers to show beverage manufacturers and distributors how their products will be displayed at the retail level. Mr Fenwick also produced a number of images of displays of “V” energy drinks at various store locations (convenience stores and supermarkets) in Australia before the filing date.
25 Mr Sayers is the Packaging Manager at Frucor. He is responsible for overseeing the packaging of Frucor’s “V” energy drinks. Mr Sayers gave evidence about Frucor’s processes around its use of Pantone 376C on packaging, including how, typically, Frucor approves new packaging designs.
26 Ms Peacock was a Trade Mark Administrator in the intellectual property team at Bell Gully, Frucor’s New Zealand solicitors. She gave evidence about how the trade mark application was prepared and filed (see below).
27 Ms Henderson is a Trade Mark Assistant at Bell Gully. She gave evidence linking a New Zealand trade mark application (that had been used by Ms Peacock in preparing and making the Australian trade mark application) with an analysis that Mr Sayers undertook of the colour of the swatch attached to that application (see below).
28 Mr Nader is the managing director of a company that owns and operates five BP petrol and convenience stores in Sydney. He gave evidence concerning the display and sale of “V” energy drinks at the stores his company operates. He said that he associates the green colour used on “V” energy drinks with those products. He said that he has observed staff at the stores pointing out “V” energy drinks to customers by reference to the green colour of the cans or other packaging. He said that he finds that the use of green in the packaging of “V” energy drinks distinguishes those products from other products that also use green in their packaging.
29 Ms Salas is the Head of Marketing and Operations at TEG Rewards. TEG Rewards undertakes online research, such as hosting surveys prepared by its clients, sending out invitations to participate in such surveys to members of the “TEG Rewards Panel”, and collating data obtained from such surveys. TEG Rewards also provides market research services and email and direct marketing services to businesses. At the time she made her affidavit, she was also Acting General Manager of TEG Rewards.
30 TEG Rewards conducted two surveys on instructions from Mr Chandler, who was called as an expert witness for Frucor. Ms Salas gave evidence about TEG Rewards’ business and aspects of TEG Rewards’ role in conducting the two surveys.
31 Mr Chandler is the managing director of Evolve Research and Consulting (ERC), a market research company. On instructions from Bell Gully, ERC undertook two market research surveys in January 2015 (Study 1) and in January 2016 (Study 2). As is apparent, Study 1 and Study 2 were carried out after the filing date. CCC sought advance rulings, pursuant to s 192A(a) of the Evidence Act 1995 (Cth), on the admissibility of Mr Chandler’s first two affidavits. I rejected CCC’s challenge to the admissibility of those affidavits: Frucor Beverages Limited v The Coca-Cola Company [2017] FCA 298. I deal with the substance of Mr Chandler’s evidence in a later section of these reasons.
32 Mr Webb is the solicitor having responsibility for the conduct of this appeal on Frucor’s behalf. His affidavit was read in support of Frucor’s application to file the further amended notice of appeal. This affidavit explains the amendments that Frucor seeks.
33 Frucor also read an affidavit sworn by Te Peeti Rewiri Armitage on 19 May 2017. In his affidavit, Mr Armitage gives evidence of various trade mark searches he conducted using the IP Australia online trade mark database. This evidence was admitted provisionally, pending the outcome of Frucor’s application to further amend its notice of appeal.
34 Finally, Frucor tendered certain paragraphs of an affidavit made by Gary Patrick Burke sworn 14 September 2016. At the time he made his affidavit, Mr Burke was the Graphics Packaging Manager for Coca-Cola South Pacific Pty Ltd. These paragraphs concern the Pantone Matching System (the PMS).
“V” energy drinks
35 Frucor is a manufacturer of beverage products in New Zealand and Australia. Its beverages include fruit juices, waters, milk-based drinks and energy drinks.
36 Energy drinks are a type of non-alcoholic beverage containing caffeine and other stimulant ingredients, such as guarana, taurine and ginseng. Energy drinks are marketed to consumers on the basis of their mental and physical stimulatory effects, arising from their ingredients. Energy drinks are accepted in the beverage industry as a separate and distinct category of non-alcoholic drink.
37 Frucor commenced operations in New Zealand in 1961. It commenced operations in Australia in 1997. In that year, it commenced to manufacture, distribute and sell energy drinks in New Zealand, principally “V”–branded energy drinks (“V” energy drinks). In 1999, Frucor commenced to distribute and sell “V” energy drinks in Australia. The key ingredients in Frucor’s “V” energy drinks are caffeine, guarana extract, and B vitamins.
38 All “V” energy drinks bear a distinctive logo (the “V” logo) which is prominently displayed on the products themselves:
39 The “V” logo is also used prominently on other items of packaging and in Frucor’s promotional and marketing material for the “V” energy drinks. The “V” logo has undergone some changes since 1999, but these changes are not of any moment to the issues raised in this appeal.
40 Frucor first applied Pantone 376C to its “core” “V” energy drink in 1997. Internally, Frucor refers to this colour as “V” Green. Since that time, Frucor has developed and implemented marketing and branding strategies that seek to make “V” Green a key part of its branding. It has used this colour since the introduction of “V” energy drinks to Australia in 1999.
41 As I have noted, Mr Sayers gave evidence about Frucor’s processes around its use of “V” Green on packaging, including how, typically, Frucor approves new packaging designs. One aspect of this approval process is the creation of a “press pass”, which is when Pantone 376 is applied to a metallic substrate. Mr Sayers said that either he or someone from his team will attend on the printer to review and sign off on the press pass, which involves inspecting the press pass with a certified Kelvin light box and comparing it by eye to existing Frucor packaging which, to Mr Sayers’ satisfaction, reflects the requirements of Frucor’s internal brand guides. Mr Sayers also uses a PMS book which contains swatches of the various colours to ensure that the colours on the press pass are correct. Mr Sayers said that, before approving the press pass, he asks himself: Will the consumer identify goods in this packaging as Frucor’s “V” energy drink? Mr Sayers said that neither he nor any member of his team uses a spectrophotometer or a spectrodensitometer (devices that read colour) in the approval process. He said that, for Frucor’s purposes, it is more useful to look at the product visually and compare it by eye with existing packaging and sample cards to confirm the colour.
42 “V” energy drinks are sold predominantly in 250ml and 500ml cans and 350ml glass bottles. They are also sold in 500ml plastic bottles. This offering was launched in 2011.
43 In the period 1999 to 2012, Frucor sold approximately 1.15 billion units of “V” energy drink in Australia, with 739 million units sold in the period 2006 to 2012. In this latter period, approximately 70% of the total units of “V” energy drink were packaged in cans on which “V” Green was the background colour on the body of the can. In 2012, this form of packaging represented 80% of the units sold. Frucor’s bottle offering of its core “V” energy drink uses “V” Green on the label and lid of the packaging.
44 Since 2005, Frucor has used “V” Green on the shrink wraparounds of its core “V” energy drink cans sold in Australia. A wraparound holds multiple cans together for sale in that form. Since 2002, it has used “V” Green on the paperboard holders for multipacks of its core “V” energy drink bottle offering sold in Australia.
45 Apart from its core “V” energy drink, Frucor also offers variants. Mr Lamb’s evidence was that, as at June 2012, the variants available in Australia were “V” BLUE, “V” SUGARFREE and “V” BLACK. However, the evidence makes clear that other variants were sold in the period up to 2012—namely, “V” BERRY/RED (2005 to 2012) and V” LEMON (2008 to 2010). The evidence also refers to a variant called “V” PLASMA that was launched in 2012, although (so far as I can see) the precise date of the launch is not recorded. These variants comprised approximately 20% of the total units of “V” energy drink sold in Australia in the period 2006 to 2012. The packaging of the variants featured labelling that distinguished them from the core product by the addition, and prominent placement, of the name of the variant on the product and the prominent use of another colour to identify the particular variant. More specifically, the “V” BLUE variant was presented in a blue can; the “V” SUGARFREE variant was presented in a silver can; the “V” BLACK variant was presented in a black can; the “V” BERRY/RED variant was presented in a red can (Pantone 201C); and the “V” LEMON variant was presented in a yellow can (UFZM090). The “V” SUGARFREE and “V” BLUE variants are still available. There is also a variant called “V” BLING which is packaged in a gold can. However, this product was not sold in Australia before the filing date. The packaging of the variants (other than “V” BLING) also use “V” Green to a limited extent, as one of the background colours in the depiction of the “V” logo. Mr Lamb produced a timeline depicting the currency of all variants in the “V” energy drink range. I have reproduced the timeline in the Schedule to these reasons. It depicts the appearance of the products in their can format.
46 Needless to say, all the “V” energy drinks—the core product and the variants—prominently display the “V” logo. This has been a consistent feature of the presentation of the drinks since their inception. The logo depicted at [38] above is taken from an internal brand guide in use from 2003 by Frucor. It is shown against the background of the green colour (“V” Green) of the core product. Examples of the logo shown against the background colours of some of the variants is also shown in the 2003 internal brand guide as follows:
47 Because “V” energy drinks contain high levels of active stimulant ingredients, Frucor does not market them to consumers under the age of 16 years. It targets its advertising and promotional materials to consumers in the 18 to 24 years old age bracket.
48 Energy drinks are presented to the public as a stand-alone drinks category. Petrol and convenience stores use “destination doors” to communicate product location. Mr Fenwick described “destination doors” as follows:
[Petrol and convenience] stores typically display drinks in separate locations in the refrigerators in store depending on the type of drink. If a consumer wishes to buy an energy drink, for example, they can go to one specific part of the refrigerator aisle and need open only one door to find all the energy drinks located together.
49 Mr Nader gave evidence that all the petrol and convenience stores his company operates have “Green V Doors” where every shelf in one door of the refrigerator is filled with “V” energy drinks in “V” Green packaging. However, this form of display only commenced to be used after the filing date. Mr Nader said that, prior to using “Green V Doors”, the stores would display “V” energy drinks together in one section of the refrigerator, where that was possible, so as to use the colour of the packaging to make the drinks readily identifiable from a distance. His evidence was silent on when, in reference to the filing date, this practice commenced.
50 Supermarkets typically use different bays within their drinks aisles for displaying energy drinks. The evidence includes images of how “V” energy drinks are displayed in supermarkets.
51 To ensure consistency in its branding, Frucor uses internal brand guides. Examples of these were provided in evidence, namely the brand guide in use from 2003 and the “V’ Brand Standards” book prepared in January 2009 by one of Frucor’s marketing partners, Dashwood Design. Extracts from Frucor’s 2005 Product Development Manual and 2011 Packaging Manual were also in evidence.
52 One tool used by Frucor to ensure consistency in its branding and marketing activities, and to ensure that these activities are in line with Frucor’s overall branding and marketing strategies for “V” energy drinks, is the “V” Brand Diamond. This is a graphic created by Frucor to demonstrate its key branding and marketing approach for “V” energy drinks. Frucor provides the “V” Brand Diamond to its branding and marketing partners as part of its marketing briefs to ensure that the branding and marketing campaigns developed are in line with Frucor’s overall branding and marketing strategies for “V” energy drinks. The “V” Brand Diamond includes as one of its “key visuals” the “V” Green colour.
53 Since 2008, Frucor has also used another internal graphic called the “V Brand Seed”, once again to ensure that its branding and marketing campaigns are in line with its overall branding and marketing strategies for “V” energy drinks. “V” Green is identified in the graphic as one of Frucor’s “Brand Ownables”.
54 Any changes to the design of the packaging for “V” energy drinks begins with the artwork for the can product. Once approved, the changes are then applied across the packaging mediums.
55 The evidence is replete with examples of “V” energy drink products. The evidence also details (principally through Mr Lamb’s affidavit) Frucor’s promotional and marketing activities in Australia by reference to “V” Green. It would not be useful to summarise the evidence in these reasons. Its effect is more apparent to the eye than through verbal description. It is sufficient for me to record my acceptance that, up to the filing date, Frucor’s promotional and marketing activities using “V” Green were extensive and covered a range of activities and mediums, quite apart from in-store and point of sale material. As some indication of the magnitude and extent of these activities, in the period 1 January 2000 to 30 August 2012 Frucor’s total media spend (television, radio, cinema, magazines, outdoor, monitoring, press, and online) was approximately $50 million.
56 The evidence includes the instructions given by Frucor to its branding and marketing partners concerning the use that is to be made of “V” Green.
57 Over the years, Frucor has undertaken several qualitative research projects with a view to understanding the recognition by consumers of “V” Green as an identifier of “V” energy drinks. Frucor has also commissioned quantitative research. This quantitative research is the research carried out by ERC and reported on by Mr Chandler.
The Pantone Matching System
58 Colour matching systems play a critical part in the packaging production process for beverages. Packaging includes labels, cans, shrink wraps, closures and coverings for multi-pack offerings. These systems allow printers, manufacturers and others involved in the printing process to accurately match and reproduce colours on beverage packaging. The PMS is one of these systems. It is the most widely-used colour matching system in the printing, packaging and graphic arts industries in Australia. By standardising colours, different manufacturers in different locations can refer to a specific PMS number to ensure that colours match without having to make a direct comparison.
59 Under the PMS, particular colours are assigned to a set of physical colour swatches and corresponding numbers, such as Pantone 376. Letters are used in conjunction with these numbers to reference the surface to which the particular colour is to be applied. For example, Pantone 376C refers to the colour Pantone 376 applied to solid coated paper. Solid coated paper has a glossy finish. Pantone 376U refers to the colour applied to solid uncoated paper. Pantone 376M refers to the colour applied to matte or dull paper.
60 The PMS does not use numbers and letters to identify colours applied to glass or materials which have a metallic surface, such as an aluminium can. Strictly speaking, if one wished to describe the appearance of a particular Pantone colour in the context of its application to a metallic surface, it would be inappropriate to use the designation “C”. Nevertheless, I accept Mr Sayers’ evidence that Pantone 376C best represents the colour Pantone 376 when printed on metallic substrate because metallic substrate, like coated paper, has a glossy or reflective characteristic.
The making of the application
61 On 15 June 2012, Ms Peacock was instructed by a Senior Associate at Bell Gully to prepare a trade mark application on behalf of Frucor to register Pantone 376C as a colour mark in Australia for the designated goods. As part of those instructions, she was told to “use the same details as those in Frucor’s New Zealand application for the GREEN colour mark, number 795206”. Ms Peacock located the hard copy file for Frucor’s New Zealand colour trade mark application and obtained a copy of the trade mark application form from it. This had a green coloured swatch stapled to it, which Ms Peacock believed to be Pantone 376C.
62 Ms Peacock prepared the (Australian) trade mark application by copying the details from the New Zealand application form into an electronic form available on the IP Australia website; scanning onto her computer a colour copy of the swatch stapled to the New Zealand trade mark application form; and electronically transferring the colour swatch as scanned to her computer into the electronic application form for the (Australian) application. She then filed the application electronically with IP Australia, using IP Australia’s online portal.
63 Ms Peacock gave this evidence:
I understand that [CCC] alleges that the colour sample on the [a]pplication is not Pantone 376C. If that is the case, I do not know how or why the colour sample is not Pantone 376C given the steps that I took in preparing and filing the [a]pplication…To the best of my knowledge, the colour swatch that I filed under the [a]pplication was Pantone 376C.
64 It is apparent from this evidence that Ms Peacock assumed that the green coloured swatch she scanned to her computer was Pantone 376C.
65 Mr Sayers gave the following evidence in his first affidavit, which is relevant to this matter:
The analysis of colour from samples that have been printed out from a secondary or tertiary source is, based on my experience with colour printing, highly likely to be compromised by any process that involves scanning, uploading, downloading and subsequent printing. Each such process is likely to result in a loss of the original integrity of colour because with each upload or download, or scan or print, small elements of the colour representation are lost and small elements of the resolution are lost, as each individual electronic device (computer, printer etc) attempts to reproduce a particular colour. The same problems occur during each printing process because not all of an image is recreated perfectly when printed, as colour is dependent upon the copying device’s ability to accurately read a colour and also upon the nature and colours of the ink used in each printer. Further, scanners and printers estimate the colour and dot size of a colour image and match those to their nearest colour setting (not the true setting) which leads to loss of colour and resolution. All of this inevitably leads to a further loss in colour and resolution. With each repetition of scanning and/or printing, the quality of a colour will deteriorate unless the image is black.
66 Mr Sayers undertook an analysis of the colour swatch used for the New Zealand trade mark application (which he referred to as “the Swatch”), using a spectrophotometer. He also undertook the same exercise in relation to the representations accompanying certain Australian colour trade mark registrations. He took L.a.b. readings of the colour swatch used for the New Zealand trade mark application and the various published representations of the Australian trade mark registrations. An L.a.b. reading provides a three-value mathematical reading for any given colour based on a measurement between light and dark (“l”); between red and green (“a”); and between yellow and blue (“b”). He then compared these readings against theoretical L.a.b. values for the colours. He obtained the theoretical values from two online colour measurement converters, which convert known colour codes to L.a.b. values. As a result of his comparison, he calculated delta values (the root mean square difference between a theoretical value and measured reading).
67 Mr Sayers calculated a delta value of 42.2 for the theoretical and measured values of the coloured swatch used for the New Zealand trade mark application. This is a significant difference. He gave this evidence:
Given the metallic base of the Swatch, I am not surprised that the Swatch produced such a reading. Colour applied to a metallic substrate will produce an L.a.b. reading that suggests a colour that is darker than the colour actually applied to the substrate and which is darker to the colour seen when viewed by eye. This is because the metallic substrate reflects the directly angled light source coming from the spectrometer, which reflects a portion of the light back to the spectrometer. This is read by the spectrometer as a darker colour. For this reason a spectrometer is not an appropriate tool for testing colours on metallic substrates, as it gives readings that are inaccurate. When viewed with the naked eye, at certain angles, my view is that the Swatch is a close match to PMS 376C.
68 Mr Sayers’ reference in this passage to a “spectrometer” was intended by him to be a reference to a “spectrophotometer”.
69 My own comparison, albeit untrained, is that the colour of the swatch used for the New Zealand trade mark application is not Pantone 367C. To my eye, the colour of the swatch is overall noticeably darker, although the colour varies depending on the light reflected when the swatch is moved under a light source.
70 Mr Sayers also said:
I consider that how colour appears to the naked eye was and still is the technique most used in the packaging industry when assessing uniformity of colour. Regardless, I note that the delta value readings noted…were very high for many of the Colour Mark Registrations. Further, I consider that to my naked eye, the difference in colour for all of the Colour Mark Registrations would be readily discernible at arms [sic] length.
71 There is no evidence that anyone verified that the colour of the swatch used for the New Zealand trade mark application was Pantone 376C. Further, it does not seem that Ms Peacock compared the colour of the swatch used for the New Zealand trade mark application with the electronic version of the swatch she created and transferred to the (Australian) application when filing it electronically with IP Australia. The colour of the swatch for the New Zealand trade mark application is distinctly different to the colour of the swatch used for the (Australian) application—of that there is no doubt.
Quantitative research: Study 1 and Study 2
72 As I have noted, Study 1 was carried out in January 2015 and Study 2 was carried out in January 2016. Study 1 was designed to assess the association between Pantone 376C and Frucor’s “V” energy drinks in respect of “general drinks” (that is, without directing the subjects’ attention to energy drinks specifically). Study 2 was designed to assess the association between Pantone 376C and Frucor’s “V” energy drinks at an “energy drinks” category level. Both studies were carried out by online surveys conducted by TEG Rewards.
73 Mr Chandler described the purpose and overall design of Study 1 as follows:
Test if consumers who drink energy drinks identify Pantone 376C with the Appellant’s Energy Drink without category cueing.
(i) The sample was taken from the public who had consumed an energy drink in the previous four-week period.
(ii) The sample did not know that the category of the research was energy drinks as the design of the questionnaire withheld this information.
(iii) The sample were asked (1) if they identified the colour Pantone 376C with any drink and (2) which brand they associated the colour Pantone 376C with.
74 In this study, Mr Chandler grouped participants into four categories: consumers who had been purchasing energy drinks for (a) less than six months; (b) for six months to two years; (c) for two to three years; and (d) for more than three years.
75 Study 2 was undertaken in respect of anticipated passing off proceedings. Mr Chandler described the purpose and overall design of the study as follows:
Test if consumers who drink energy drinks identify Pantone 376C with the Appellant’s Energy Drink with category cueing.
(iv) The sample was taken from the public who had consumed an energy drink in the previous four-week period.
(v) The sample knew that the category of the research was energy drinks as the design of the questionnaire provided this information.
(vi) The sample were asked (1) if they identified the colour Pantone 376C with any drink and (2) which brand they associated the colour Pantone 376C with. Consumers were also asked if they identified Pantone 375C with any drink and if so which brand. Pantone 375C is very similar in colour to Pantone 376C, and was, at the time, being used by a competitor of the Appellant in relation to a promotional sub-set of its energy drinks (28 Black).
76 Mr Chandler said that the findings from both studies were relevant to determine:
(a) how strongly consumers identify Pantone 376C with Frucor’s “V” energy drinks;
(b) whether consumers with longer relationships with, and more frequent purchases of, Frucor’s “V” energy drinks have a stronger identification; and
(c) whether consumers identify Pantone 376C on its own with Frucor’s “V” energy drink (that is, use the colour to distinguish Frucor’s “V” energy drinks from other energy drinks).
77 In each study, the target population was energy drink consumers.
78 Mr Chandler’s key findings in relation to Study 1 were as follows:
(a) Pantone 376C was more strongly identified with a brand compared to the other colours tested (blue, yellow and black).
(b) Frucor’s “V” energy drink was the dominant brand identified.
(c) The identification of Pantone 376C with Frucor’s “V” energy drink grew over time as consumers became more familiar with the product.
(d) Pantone 376C is significantly more likely to be identified with Frucor’s “V” energy drink than other colours.
(e) Pantone 376C has a strong and significant identification with Frucor’s “V” energy drink that is much stronger than the other colours tested in relation to other drinks.
(f) Consumers have become conditioned through memory association to identify Pantone 376C on its own with Frucor’s “V” energy drink, without other identifiers.
79 In his third affidavit, Mr Chandler stressed that Study 1 was directed to assessing whether consumers “identified” Pantone 376C with Frucor’s “V” energy drink, not whether they merely saw an “association” between the two. He said that he regarded consumers identifying Pantone 376C with a particular product as qualitatively different from them merely drawing an association between the colour and a particular product because, in his view, identification connotes a stronger connection between the colour and the product than mere association.
80 Mr Chandler’s conclusion from Study 1 was that Pantone 376C is an element of Frucor’s brand identity that has properties going well beyond decorative or functional attributes, and distinguishes Frucor’s “V” energy drinks from the energy drinks of other traders.
81 Mr Chandler’s key findings in relation to Study 2 were as follows:
(a) The brand “V”, without colour or word cues, has very high brand awareness.
(b) Pantone 376C showed a level of 77% identification with a brand of energy drink.
(c) Pantone 375C showed a level of 79% identification with a brand of energy drink.
(d) 85% of those who identified Pantone 376C with an energy drink, identified Frucor’s “V” energy drink as the drink.
(e) 81% of those who identified Pantone 375C with an energy drink, identified Frucor’s “V” energy drink as the drink.
(f) Consumers of energy drinks are highly likely to identify Pantone 376C and very similar colours with Frucor’s “V” energy drink.
82 Mr Chandler’s overall conclusions from the two studies were:
(a) Those respondents who had been consuming energy drinks for a longer period of time were more likely to identify Pantone 376C with Frucor’s “V” energy drink.
(b) Repetition of brand exposure through purchase and consumption is driving identification between Pantone 376C and Frucor’s “V” energy drink.
(c) The studies demonstrate a high level of identification between Pantone 376C and Frucor’s “V” energy drink.
(d) Pantone 376C in fact distinguishes Frucor’s “V” energy drink in the minds of consumers from the energy drinks of other traders.
83 In his second affidavit, Mr Chandler addressed the question whether the results of the surveys were likely to differ materially from the results that would have been obtained had the surveys been conducted on or around the filing date. Mr Chandler’s answer to this question was that, had the surveys been conducted at an earlier time, it is not likely that the level of identification between Pantone 376C and Frucor’s “V” energy drink would have differed materially. Mr Chandler’s explanation for this conclusion was that he had designed both surveys to test identification through the associative effects of memory. Mr Chandler explained “associative memory” by the following example:
…if a consumer thinks of a context (e.g. drink) and sees or thinks of a colour (e.g. green) that may trigger in the consumer a memory of a particular product, if the colour has sufficient contextually relevant cognitive association with the product.
84 Mr Chandler said that the associative theory of memory supports a conclusion that cumulative exposure between events and context results in association through the action of conditioning. Developing this argument, he said:
…it is my opinion, based on my experience in conducting surveys of these kinds over many years, that the level of identification recorded for consumers of more than three years’ duration is likely to be the “ceiling” for average identification amongst consumers. That is, I would not expect that the recorded level of identification for that group to increase even further as duration of consumption increases.
85 Based on certain assumptions with which he was provided in relation to the way in which “V” Green had been used in the packaging, promotion and advertising of “V” energy drinks, Frucor’s advertising spend, and the number of units of “V” energy drinks sold in the 13 year period from 1999 to June 2012, Mr Chandler opined:
…based on the associative memory effects discussed …I consider that, had the 2015 or 2016 Surveys been undertaken in around June 2012, the results showing identification between Pantone 376C and [Frucor’s “V” energy drink] would be unlikely to have differed materially from those in fact shown in the Surveys. There is nothing to suggest a similarly constituted sample population of consumers would have had, on average, different, or specifically lower, levels of identification between Pantone 376C and [Frucor’s “V” energy drink]. By way of example, I would expect that if a survey had been conducted in June 2012, respondents who had been purchasing energy drinks for two to three years as of that date would have had the same level of identification between Pantone 376C and [Frucor’s “V” energy drink] as that of respondents who had been purchasing energy drinks for two to three years as of January 2016. This is because there was, as of June 2012, a more than sufficient period (13 years) of advertising of the product, coupled with repeated exposure to the product at the point of sale, to result in a similar level of identification between Pantone 376C and [Frucor’s “V” energy drink] for the same type of respondents as of January 2016.
86 CCC advances a number of criticisms of Study 1 and Study 2.
87 First, it submits that the studies did not examine the proper universe. Mr Chandler restricted his sampling frame to a subset of people who had purchased an energy drink in the last four weeks—his population of interest. CCC submits that the effect of this was to skew the sample frame to a group of consumers who were already likely to be familiar with Frucor's packaging. Further, with specific reference to Study 2, CCC submits that it was left to individual participants to define for themselves what an “energy drink” was. CCC argues that certain survey responses show that participants had a broad and varied understanding of the meaning of “energy drink”, with the result that whatever utility was intended to be achieved by limiting the sampling frame to energy drink users was lost in the process.
88 Secondly, CCC submits that it is not possible to properly assess whether a representative sample was drawn from the chosen universe because the methodology that was used in that regard is not transparent. In this connection, the sample was drawn from a panel provided by TEG Rewards. The panel was made up of people who were recruited by TEG Rewards by various means. In cross-examination, Mr Chandler accepted that the sample was “non-probabilistic”, meaning that it was not a simple random sample—the sample was populated by people who self-selected by signing up with TEG Rewards. It seems that Mr Chandler assumed that, based on TEG Rewards’ assurances, its sampling procedures were sufficiently rigorous and that, certainly for the purposes of Study 2, the sample used would be representative of the Australian population.
89 Thirdly, CCC submits that there are reasons to doubt the accuracy of the conclusions expressed in the studies due to errors in data collection and/or reporting.
90 Fourthly, CCC submits that the studies do not demonstrate use of colour as a trade mark, and certainly not the mark applied for insofar as it is defined as a colour applied as “the predominant colour to the goods, their packaging or labels”. In this connection, CCC submits that there is a “disconnect” between the survey stimulus (a block of colour) and the mark applied for (as the predominant colour of the goods, their packaging or labels), which contemplates the presence of other matter. Further, CCC submits that the design of the studies did not take account of the “V” logo, which is Frucor’s key branding element for its energy drinks. It argues that for the studies to afford evidence that “V” Green alone functioned as a trade mark at the relevant time, it is necessary to separate the role played by the colour from the role played by the “V” logo. It submits that the most the studies show is an association between “V” energy drinks and Pantone 376C.
91 CCC did not call its own expert evidence to support these criticisms.
Relevant legislation
Making a trade mark application
92 Section 27(1) specifies who may apply for the registration of a trade mark. The form of the application is provided for in s 27(2):
(2) The application must:
(a) be in accordance with regulations; and
(b) be filed, together with any prescribed document, in accordance with the regulations; and
(c) be made by a person or persons having legal personality.
93 An application for the registration of a trade mark must be in an approved form: reg 4.1(1).
94 The requirements for filing are specified in reg 4.2:
(1) To be taken to be filed, an application for registration of a trade mark that is in an approved form must:
(a) state that the application is for registration of the trade mark, or contain a clear indication to that effect; and
(b) include a representation of the trade mark that is sufficient to identify the trade mark; and
(c) specify the goods and/or services in relation to which the application is made; and
(d) include sufficient information to enable the Registrar to establish the identity of the applicant; and
(e) contain sufficient information to enable the Registrar to contact the applicant.
(2) If an application does not meet a requirement set out in paragraph (1)(a), (b), (c), or (d), the Registrar must give to the applicant written notice of the requirement.
(3) If the applicant meets the requirement within a period of 2 months from the date of the notice, the application is taken to be filed on the day on which the requirement is met.
(4) If the applicant does not meet the requirement within that period, the application is taken not to have been filed.
95 Regulation 4.3 deals with the representation of the trade mark that is to be included in an application. Importantly to the present case, reg 4.3(7) provides:
(7) If a trade mark for which registration is sought contains or consists of a sign that is a colour, scent, shape, sound or an aspect of packaging, or any combination of those features, the application for registration of the trade mark must include a concise and accurate description of the trade mark.
96 The Registrar must examine and report on the application. In this connection, s 31 provides:
The Registrar must, in accordance with the regulations, examine and report on:
(a) whether the application has been made in accordance with this Act; and
(b) whether there are grounds under this Act for rejecting it.
97 CCC draws attention to the words “under this Act” in s 31(b). The words “this Act” were introduced by the Trade Marks Amendment Act 2006 (Cth) (the 2006 Act). Prior to that amendment, s 31(b) referred to the obligation of the Registrar to examine and report on whether there were grounds under “Division 2” (meaning Div 2 of Pt 4 of the Act) for rejecting the application. CCC submits that this change is significant because now—including in relation to the present application—the Registrar is required to consider rejection on all grounds that might be available under “this Act” wherever those grounds might be found, not merely under “Division 2”. In this connection, CCC also draws attention to the fact that “this Act” is defined in s 6 of the Act to include the Regulations.
98 In the course of submissions, both parties drew my attention to the following passages in the Explanatory Memorandum for the Trade Marks Amendment Bill 2006 (Cth):
4.6 GROUNDS FOR REJECTION AND OPPOSITION ARE NOT ALL IN DIVISION 2 PART 4 AND 5
Numerous provisions
1. Numerous provisions and notes in the Act refer to Division 2 of Part 4 when identifying the grounds on which a trade mark application may be rejected. Similarly numerous provisions refer to Division 2 of Part 5 when identifying the grounds on which registration of a trade mark may be opposed. For example, section 31 of the Act states that the Registrar must examine and report on whether there are any grounds under Division 2 of Part 4 for rejecting the application. However, there are other grounds for rejection and opposition set out in other parts of the Act, for example those in Part 16 relating to certification trade marks, Part 17 for defensive trade marks and Part 17A relating to applications received via the Madrid Protocol. Section 6 of the Act states that the Act includes the Regulations. Regulation 4.15A sets out grounds for rejection relating to applications that are identical or deceptively similar to trade marks protected under the Madrid Protocol.
2. The references to Division 2 of Part 4 and Division 2 of Part 5 could mislead the reader that the only grounds for rejection or opposition are in Division 2 of Part 4 or 5. All of those references wherever they appear in the Act are amended to refer to “the Act” rather than to any particular Division or Part of the Act.
99 The grounds for rejection in Pts 16 and 17 of the Act, and Pt 17A read with reg 4.15A, are specific and are identified as grounds of rejection.
100 CCC submits that these changes to the Act are also relevant to understanding the scope and operation of s 33 of the Act, which provides:
(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it.
Note: for this Act see section 6.
(2) The Registrar may accept the application subject to conditions or limitations.
Note: For limitations see section 6.
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.
Note: For this Act see section 6.
(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note: For applicant see section 6.
Available grounds of opposition
101 Section 57, which is found in Div 2 of Pt 5 of the Act, provides:
The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Act, except the ground that the trade mark cannot be represented graphically.
102 Once again, CCC draws attention to the words “under this Act”. This provision was also amended by the 2006 Act, which introduced “this Act” into s 57 in substitution for the words “Division 2 of Part 4”. CCC submits that the consequence of this change is that the scope of the grounds of opposition were expanded beyond the grounds of rejection specified in Div 2 of Pt 4 of the Act to other grounds of rejection.
103 CCC’s point is that s 33(3)(a) read with s 27(2)(a) and regs 4.2 and 4.3 provides such a ground of rejection.
The requirement that a mark be capable of distinguishing the applicant’s goods or services
104 The parties agree that this appeal falls to be determined in accordance with the form the Act took prior to the amendments introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth).
105 In that form, s 41 provided:
41 Trade mark not distinguishing applicant's goods or services
(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a) the Registrar is to consider whether, because of the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.
Note 1: For goods of a person and services of a person see section 6.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6) If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
106 The operation of s 41, in this form, has been discussed in a number of cases, most notably in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50 (Blount). In that case, Branson J referred to subs (3) to (6) of s 41 as “designed to control the process” by which the Registrar is to reach a conclusion as to whether the mark in question is capable of distinguishing the applicant’s goods. So understood, s 41(2) is the pivotal provision which requires an application for registration of a trade mark to be rejected if the mark is not capable of distinguishing the applicant’s goods or services for which the mark is sought to be registered, from the goods or services of other persons. The remaining provisions (subs (3) to (6)) set the framework by which the question posed by s 41(2) is to be considered and answered: Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511 at [6]; see also Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93 at [13]–[18] (Allsop CJ) and [115]–[120] (Perram J).
The power to amend
107 The power to amend an application for a registered trade mark is found in Pt 6 of the Act. Section 63 provides:
(1) The Registrar may, at the request of the applicant or of his or her agent, amend an application for the registration of a trade mark in accordance with section 64, 65 or 65A.
(2) If:
(a) an application for the registration of a trade mark may be amended under section 65; and
(b) the applicant has not asked that the application be amended;
the Registrar may, on his or her own initiative but in accordance with the regulations, amend the application as necessary:
(c) to remove any ground on which the application could be rejected; or
(d) so as to ensure that the application is made in accordance with this Act.
108 Where, as in the present case, particulars of the application have been published under s 30 of the Act, an application for amendment of a trade mark application can only be in accordance with either s 65 or s 65A (when s 65 does not apply). When s 65A applies, the request for amendment must be published in the Official Journal.
109 Section 65 provides:
(1) If the particulars of the application have been published under section 30, the application may be amended as provided in this section.
(2) An amendment may be made to the representation of the trade mark if the amendment does not substantially affect the identity of the trade mark as at the time when the particulars of the application were published.
(3) An amendment may be made to an application to which section 51 applies to remove one or more trade marks from the application.
(4) An amendment may be made to correct an error in the classification of goods or services specified in the application.
(5) An amendment may be made to add to the class or classes of goods or services specified in the application one or more other classes of goods or services if the Registrar is of the opinion that it is fair and reasonable in all the circumstances to do so.
(6) An amendment may be made to change the type of registration sought in the application (for example, an application for the registration of a trade mark as a certification trade mark may be amended to an application for registration as a collective trademark).
(7) An amendment may be made to any other particular specified in the application unless the amendment would have the effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted.
110 Section 65A provides:
(1) This section applies if:
(a) the particulars of the application have been published under section 30; and
(b) the amendment requested is not an amendment which could be made under section 65.
(2) The application may be amended to correct a clerical error or an obvious mistake in the application if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to make the amendment under this section.
(3) Subject to subsection (5), the Registrar must advertise the request for the amendment in the Official Journal.
(4) Subject to subsection (5), a person may, as prescribed, oppose the granting of the request for the amendment.
(5) If the Registrar is satisfied that a request for an amendment would not be granted even in the absence of opposition under subsection (4):
(a) the Registrar need not advertise the request in accordance with subsection (3); and
(b) the request cannot be opposed, despite subsection (4); and
(c) the Registrar must refuse to grant the request.
111 I draw attention to the limitation expressed in s 65A(2). In Garford Pty Ltd v Dywidag-Systems International Pty Ltd [2014] FCA 1039 (Garford), I discussed the nature of a “clerical error” and “obvious mistake” in the context of amendments that are allowable under s 102 of the Patents Act 1990 (Cth) (the Patents Act). The nature of a “clerical error” and “obvious mistake” is the same under the Trade Marks Act in respect of amendments to trade mark applications. At [14]-[19], I said:
14 In The Queen v Commissioner of Patents; Ex Parte Martin (1953) 89 CLR 381, Williams ACJ said (at 395):
… A clerical error, I would think, occurs where a person either of his own volition or under the instructions of another intends to write something and by inadvertence either omits to write it or writes something different. …
15 Fullagar J (with whom Kitto J and Taylor J agreed (at 408)) said (at 406), that the expression “clerical error” is of a “somewhat elastic character”. After considering various dictionary meanings of the word “clerical”, his Honour continued:
… Probably no one would deny that a clerical error may produce a significant, and even profound, effect as for example, in a case in which a writer or typist inadvertently omits the small word ‘not’. But the characteristic of a clerical error is not that it is in itself trivial or unimportant, but that it arises in the mechanical process of writing or transcribing. …
16 In General Tire & Rubber Company (Frost's) Patent [1972] RPC 271, Graham J (at 279) considered an “obvious mistake” to be one which:
… involves that the instructed public can, from an examination of the specification, appreciate the existence of the mistake and the proper answer by way of correction.
17 In reaching that conclusion, his Lordship distinguished between such a mistake and a mistake that had been “obviously made”. His Lordship (at 278) explained the distinction as follows:
It is the mistake which must be obvious and not the fact that it has been made. This implies, to my mind, that both the fact of mistake and the correction necessary must be clear to the reader's mind, and it is not enough if he merely appreciates the presence of a mistake. If, in a mathematical context, it is said “2 and 2 make 5”, the reader would immediately say: ‘5 is an obvious mistake for 4’. If, however, there is more than one possible correct answer to the question, particularly where the answers may depend on intention or judgment, the reader would say: “Obviously a mistake has been made but I cannot tell you what is the right answer”. The wording of the section itself therefore, to my mind, shows an intention in favour of the first construction rather than the second.
18 In the course of considering that question, his Lordship observed (at 277) that, for the purpose of correcting an obvious mistake:
… it does not matter that the claim may be enlarged by the amendment.
19 Both these cases accept that the correction of clerical errors and obvious mistakes may involve the making of very significant amendments to the specification and, in particular, the claims. Yet, such amendments are allowable if they are truly “clerical errors” or “obvious mistakes”.
112 I also draw attention to the fact that s 65A provides for advertising and opposition proceedings in relation to requests for amendments under that section. Section 65 contains no such provisions.
113 In its form relevant to this appeal, s 67 provided that an appeal lies to the Court from a decision under Pt 6.
The powers of the Court in an appeal from a decision or direction of the Registrar
114 The jurisdiction of the Court in determining appeals against decisions, directions or orders of the Registrar is to be found in Pt 18 of the Act. The Court’s powers are found in s 197. In its form relevant to this appeal, s 197 provided:
On hearing an appeal against a decision or direction of the Registrar, the Federal Court may do any one or more of the following:
(a) admit evidence orally, or on affidavit or otherwise;
(b) permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the Registrar;
(c) order an issue of fact to be tried as it directs;
(d) affirm, reverse or vary the Registrar's decision or direction;
(e) give any judgment, or make any order, that, in all the circumstances, it thinks fit;
(f) order a party to pay costs to another party.
What is the mark?
115 This is the threshold question. It is relevant to each of the three main issues raised by the parties.
116 Frucor submits that the ambiguity in the identity of the mark can be resolved as a matter of construction of the trade mark application. It submits that any interested trader inspecting the Register would regard the description under reg 4.3(7) as a more reliable identifier of the colour of the mark than the swatch, essentially because the swatch would be regarded as inherently unreliable in that a faithful rendering of the colour might be corrupted by processes such as scanning, printing and matters of that kind. Frucor submits that anyone looking at the Register would readily appreciate that Pantone 376C is the colour for which application has been made.
117 Frucor accepts that s 41(6) of the Act cannot be applied in the present case without resolving the ambiguity. In opening, Frucor argued that if the ambiguity cannot be resolved as a matter of construction, or that, properly construed, the application is for the colour of the swatch (which is definitely not Pantone 376C), then the fate of the application depended on the representation of the mark being amended to show the colour Pantone 376C.
118 I am not persuaded that the identity of the mark can be resolved as a matter of construction of the trade mark application. Although not cast in these terms, Frucor’s argument really proceeds from its subjective intention as to what it wanted to register. This is the reason why it gives primacy to the words “Pantone 376c” in the description under reg 4.3(7) over the representation of the mark itself, with the representation playing at best a subsidiary role, even to the point of being ignored or disregarded. This, it seems to me, subverts the scheme under Pt 4 of the Act and Pt 4 of the Regulations for making a trade mark application.
119 A trade mark application must be in accordance with the Regulations and include a representation that is sufficient to identify the mark. Regulation 4.3 specifies the requirements for the representation. It is in the context of specifying the requirements for the representation that reg 4.3(7) provides, in the case of a colour mark (amongst certain other types of marks), that the application must include a concise and accurate description of the mark. This, of course, means a concise and accurate description of the mark as represented. It is not a description made without reference to the mark as represented. Still less is it a description made despite the representation of the mark. The importance of the representation is underscored by the requirement in reg 4.3(10) that it be of a kind and quality that ensures that the features of the mark will be preserved in the course of time and be suitable for reproduction.
120 Thus, the scheme provides the means by which the identity of the mark can be—and is to be—ascertained objectively. The identity of the mark is not ascertained by divining the trade mark applicant’s subjective intentions or desires. Once this is appreciated, Frucor’s argument which accords primacy to the statement under reg 4.3(7) falls down.
121 The matter can be considered in the following way. A person inspecting the Register would readily understand that application has been made for the colour green shown graphically by the representation. He or she is told that this colour is “Pantone 376c”. He or she may accept that as a fact, not knowing that the colour is not Pantone 376C. However, if he or she were to inquire further, he or she might come to know that the colour, as depicted in the representation, is not Pantone 376C. At this point, it becomes manifest that the representation and the description are in conflict. They cannot both be correct. Where does the error lie? Is it in the description of the colour depicted in the representation as “Pantone 376c” or in the graphic representation of the colour itself? Each alternative is equally possible on an objective assessment. A person presented with this conundrum would not know how to resolve it and thus come to an understanding of what mark has been applied for. This is why the delegate accepted that the application was fatally flawed.
122 Contrary to Frucor’s submission, I do not accept that a person inspecting the Register would approach that task with a mindset that the description is a more precise identifier of the colour that is claimed. Further, I do not accept that a person inspecting the Register should be taken as having an understanding that the reproduction of colour through processes such as scanning, uploading, downloading and printing can be compromised in the process. A person inspecting the Register is entitled to act on the assumption that the trade mark applicant’s own depiction of colour in the representation accompanying the application is accurate.
123 Further, I do not find Mr Sayers’ examination of selected Australian colour mark registrations to be persuasive or, indeed, helpful. The fact that there might have been deficiencies in the rendering of colour in other trade mark applications does not assist in determining the issues raised in this appeal.
Non-compliance with s 27(2): an available ground of rejection?
CCC’s submissions
124 CCC’s submission on this issue can be stated simply. Section 33(3)(a) of the Act provides that if the Registrar is satisfied that an application has not been made in accordance with the Act, he or she must reject it. A reference in s 33(3)(a) to “the Act” includes, by reference to s 6, the Regulations. Section 27(2) of the Act provides that an application for registration must be in accordance with the Regulations. The present application is not in accordance with the Regulations because, contrary to reg 4.2(1)(b), the representation is not sufficient to identify the mark and, contrary, to reg 4.3(7), the description provided is not a concise or accurate description of the colour green depicted in the representation. The effect of non-compliance at the acceptance stage is that the Registrar must reject the application. By reason of s 33(a), s 27(2)(a) is, in the language of s 57, a ground on which an application for the registration of a trade mark may be rejected under the Act. Therefore, s 27(2)(a) is a ground on which the registration of a mark may be opposed.
Frucor’s submissions
125 Frucor disputes this construction of s 57. It points to the distinction drawn in ss 33(1) and 33(3) between an application that has not been made in accordance with the Act, and grounds under the Act for rejecting the application. Frucor points to a similar bifurcation in s 31, as well as in ss 176 and 177 dealing with the acceptance or rejection of applications for certification marks. Frucor submits that s 27(2)(a) arises under the first limb—the requirement to make an application in accordance with the Act—not the second limb. In short, s 27(2)(a) is not a ground “on which an application for the registration of a trade mark may be rejected under this Act” within the meaning of s 57. Frucor submits that this construction of s 57 is supported by a number of textual and contextual matters.
126 First, Frucor submits that when dealing with s 27(2)(a) it is appropriate to have regard to the totality of the legislative scheme under the Act: Woolworths Ltd v BP plc (No 2) [2006] FCAFC 132; (2006) 154 FCR 97 (Woolworths/BP) at [40]. Where s 27(2)(a) is not complied with by reason of non-compliance with any of regs 4.2(1)(a) to (d), the balance of reg 4.2 provides a self-contained statutory procedure for determining the fate of the application: the requirement(s) will be met by the applicant within a two month period after notice of non-compliance is given (in which event, the application will be taken to have been filed on the date on which the requirement(s) is/are met), or the requirement(s) will not be met within that period (in which event, the application will be taken not to have been filed). In short, the occasion for rejection will not arise. The necessity to reject the application will have been obviated. Failure to comply with reg 4.3(7) should be seen in the context of the requirements for the representation of the mark. Seen in that context, a failure to comply with reg 4.3 would result in a failure to comply with reg 4.2(1)(b), with the fate of the application being determined as aforesaid (that is, the application will be taken as not having been filed).
127 Secondly, Frucor submits that s 27(2) should not be considered differently to s 27(1), which stipulates who may apply for the registration of a mark. Frucor submits, therefore, that if non-compliance with s 27(2) provides a ground on which an application can be rejected, then, similarly, non-compliance with s 27(1) must also be a ground of rejection. Section 27(1) provides:
A person may apply for the registration of a trade mark in respect of goods and/or services if:
(a) the person claims to be the owner of the trade mark; and
(b) one of the following applies:
(i) the person is using or intends to use the trade mark in relation to the goods and/or services;
(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.
Note: For use see section 7.
128 Further, if non-compliance with s 27(1) provides a ground of rejection, then s 57 would treat non-compliance as also providing a ground of opposition. Importantly, however, ss 58 and 59 specifically address, as grounds of opposition, the non-compliance with s 27(1).
129 Section 58 provides:
The registration of a trade mark may be opposed on the grounds that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.
130 Section 59 provides:
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
131 Frucor’s point is that if non-compliance with s 27(1) is treated as a ground of rejection then the legislature’s provision of ss 58 and 59 as grounds of opposition would be otiose. This cannot have been intended. Therefore, s 27(1) cannot be a ground of rejection. If s 27(1) is not a ground of rejection, there is no reason to treat s 27(2) differently.
132 The fact that ss 58 and 59 are not otiose as grounds of opposition appears to have been recognised in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 (Pham Global) where at [31]-[32] the Full Court discussed the relationship between s 27(1) and ss 58 and 59:
31 In the context of this scheme, where the capacity to file an application depends on a claim of ownership (s 27(1)(a)) and use or an intention to use the mark (s 27(1)(b)), the ground of opposition in s 58 should be construed as applying at the time the application is made. If it were otherwise, the provisions regulating the capacity to file an application, s 27(1)(a) and s 27(1)(b), need not require the applicant to be a person claiming to be the owner of the mark who is using or intends to use the mark as at the application date. Similarly, as held in Food Channel with respect to s 59 (which provides that registration may be opposed on the ground that the applicant “does not” intend to use or authorise the use of the mark or to assign the mark to a body corporate for use), if the requisite intention need not exist as at the filing of the application then there would be no purpose in s 27(1)(b) imposing such a requirement.
32 Once it is understood that the legislative scheme operates in the context of established principle that the alternative sources of ownership of a trade mark are authorship and use before filing an application for registration or the combination of authorship, filing of an application for registration and an intention to use or authorise use, the relationship between s 27 and ss 58 and 59 of the 1995 Act becomes apparent. The grounds of opposition in ss 58 and 59 reflect the requirements of s 27. Only a person claiming to be an owner may apply for registration. That claim may be justified at the time the application is made based on either alternative source of ownership. But if the claim is not justified at that time, ss 58 and/or 59 are available grounds of opposition. Moreover, if the applicant is not the owner of the mark at the time of the filing of the application, the assignment provisions in ss 106 – 111 do not assist because they authorise the assignment of the mark and thus pre-suppose, consistent with established principle, that the applicant owns the mark.
133 Thirdly, Frucor submits that when the Act deals with grounds of rejection, it refers to them as such. In this connection, it points to the heading of Div 2 of Pt 4 of the Act (“Grounds for rejecting an application”), and ss 176 and 177 (dealing with applications for certification marks) and s 187 (dealing with applications for defensive marks). Frucor submits that s 27(2) is not cast in such terms. Rather, it is cast in positive terms as to what an application must contain and by whom it must be made, without characterising non-compliance as a “ground” for rejecting the application.
Conclusion
134 There can be no doubt that the 2006 Act broadened the grounds of rejection that were also to be available as grounds of opposition, but this does not mean that every occasion of non-compliance with a requirement of the Act or the Regulations thereupon becomes a “ground” of rejection addressed by s 57. To construe the Act otherwise would be to ignore the bifurcation apparent in s 31, s 33(1) and s 33(3) of an application’s compliance with the Act and the separate subject of whether there are “grounds” under the Act for rejecting the application. The two limbs should not be conflated or confused. A distinction has been drawn by the legislature. That distinction should be construed as a purposeful one. I note in passing that the same bifurcation is reflected in s 63 of the Act dealing with amendment to a trade mark application.
135 Therefore, the fact that s 33(3)(b) directs attention to “grounds” under the Act for rejecting the application shows that there is particular subject matter covered by the Act that is to be taken as constituting “grounds” of rejection. Plainly enough, the fact that an application has not been made in accordance with the Act is not such a “ground”. It is in fact distinguished from such a “ground” by the presence of s 33(3)(a). When s 33(3) requires the Registrar to reject an application that has not been made in accordance with the Act, the rejection is for that reason, and that reason alone. Whether, additionally, there are “grounds” under the Act for rejecting the application is a separate and distinct inquiry.
136 I am satisfied that when s 57 refers to “any of the grounds on which an application for the registration of trade mark may be rejected under this Act”, it is referring to those provisions of the Act which identify themselves as such a “ground”. Sections 39 to 44, s 177 and s 187 are such “grounds”. A failure to comply with s 27(2)(a) is not such a “ground”. That failure falls to rejection by dint of s 33(3)(a), not s 33(3)(b).
137 I am satisfied, therefore, that s 57 does not address rejection of an application on the basis of s 33(3)(a) and, hence, a failure to comply with s 27(2)(a). It deals with other, particular subject matter, which it then treats as grounds of opposition as well as grounds of rejection.
138 This reasoning is consistent with the Full Court’s treatment in Pham Global of ss 58 and 59 as responsive to s 27(2)(a), although I accept that the Full Court was not dealing with the particular issue of whether non-compliance with s 27(2)(a) is a ground of rejection referred to in s 57. Nonetheless, the passage from the Full Court’s reasons quoted above implicitly recognises that s 27(2)(a) is not a ground of rejection addressed by s 57, for the reasons advanced in Frucor’s submissions.
139 I do not think that Frucor’s analysis of regs 4.2 and 4.3 as providing a discrete statutory scheme materially assists on this issue of construction. This is because regs 4.2(3) and (4) are directed to the act of filing, not the separate and subsequent step of acceptance. Section 33 provides the criteria by reference to which the Registrar must either accept or reject an application that has been filed.
140 For these reasons, CCC cannot rely on a failure to comply with s 27(2)(a) as a separate ground of opposition under s 57.
Is CCC’s ground of opposition under s 41 of the Act established?
Introduction
141 Although the question posed by the parties is framed in this way, the issue is really whether Frucor has established the requirement of s 41(6)(a). If not, CCC’s opposition must succeed because the mark applied for will be taken as not being capable of distinguishing Frucor’s energy drinks from the goods or services of others and, by dint of s 41(2), the mark will not be registrable.
142 The delegate reasoned that, as the mark was defined ambiguously, it was not capable of distinguishing Frucor’s energy drinks, and thus fell afoul of s 41(2) of the Act. The delegate reached this conclusion independently of the operation of the succeeding provisions of s 41.
143 I do not, with respect, agree with this reasoning, although I agree with the delegate’s ultimate conclusion. As I have noted above, s 41(2) is the pivotal provision within s 41. It requires an application for registration of a trade mark to be rejected if the mark is not capable of distinguishing the applicant’s goods or services (for which the mark is sought to be registered) from the goods or services of other persons. The remaining provisions set the framework by which the question posed by s 41(2) is to be considered and answered. As Branson J remarked in Blount at 56, subs (3) to (6) of s 41 are designed to control the process by which the Registrar is to reach a conclusion as to whether the mark is capable of distinguishing the applicant’s goods or services from the goods or services of others.
144 As I have noted, Frucor accepts that the mark it claims is not to any extent inherently adapted to distinguish. The question thus posed by s 41(2) falls to be considered by reference to s 41(6). Despite the overall burden cast on CCC as the opponent, it is for Frucor, as the trade mark applicant, to establish conformably with s 41(6)(a) that the mark does distinguish the designated goods because of the extent of its use of the mark before the filing date. If Frucor does not establish (what is often described as) the factual distinctiveness of the mark, the mark is taken, by s 41(6)(b), as not to be capable of distinguishing the designated goods from the goods or services of other persons. The consequence is that the requirement of s 41(2) cannot be met and the mark cannot be registered.
145 As the Full Court explained in Woolworths/BP at [79], it is important to appreciate that it is the use of the mark applied for, as a trade mark, that determines what can be registered. In that connection, the Full Court emphasised that the mark that is the subject of the application for registration must conform to the mark that was, for the purposes of s 41(6), used before the filing date. Because, in the present case, the mark is defined ambiguously—its features are uncertain and cannot be determined objectively—it is not possible for Frucor to establish the factual condition of s 41(6)(a) by reference to its own particular use of “V” Green. It follows that, for that reason alone, registration should be refused in the present case.
146 I will, however, also consider this issue on the assumption that, contrary to my finding, the mark applied for is, unambiguously, Pantone 376C. It is not disputed that “V” Green can be adequately and appropriately described as Pantone 376C.
147 Whether s 41(6)(a) is established in the present case involves a consideration of two matters: first, whether “V” Green applied as the predominant colour to energy drinks, their packaging or labels was used by Frucor as a trade mark before the filing date; secondly, if so, whether that use was such that, before the filing date, “V” Green in fact distinguished energy drinks, bearing that mark, as Frucor’s energy drinks.
148 In Woolworths/BP, the Full Court explained at [77] that whether or not there has been use of a sign as a trade mark involves an understanding, from an objective viewpoint, of the purpose and nature of the use, considered in the context of the relevant trade. The Full Court also explained that the way in which the mark has been used might not involve “a single or clear idea or message”. The Full Court said:
…The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other person, that is to say it must distinguish them in the sense of indicating origin…
Frucor’s submissions
149 Frucor submits that, objectively assessed, the primary, if not the sole, purpose of its use of “V” Green before the filing date was to distinguish its “V” energy drinks from the energy drinks of other traders. Frucor advances a number of reasons why this is so.
150 First, Frucor submits that “V” Green is such a dominant and striking feature of the trade dress of its energy drinks that consumers would readily appreciate that it is being used to indicate the origin of the goods.
151 Secondly, Frucor submits that “V” Green was not being used for any other purpose. “V” Green does not indicate the flavour of the drinks or convey any other meaning; nor is it the colour of the beverage. Frucor submits that the only purpose which “V” Green serves and served was as an indicator of origin.
152 Thirdly, Frucor submits that “V” energy drinks are and were displayed in stores in a way that calls attention to the mark as a badge of origin. In this connection, Frucor points to the shelf placement of “V” energy drinks, particularly with reference to the examples provided in evidence of supermarket shelves and convenience store refrigerators which, it says, display a “wall of green” and herald the location of the product. Frucor also points to examples where “V” energy drinks were stacked in a block on the floors of stores, to present a “block of green”.
153 Fourthly, Frucor also points to the “dominant use” of “V” Green on all marketing and promotional materials for “V” energy drinks.
154 Fifthly, Frucor submits that it has “branded” its “V” energy drinks with “V” Green with the intention that consumers will identify that colour, on its own, with “V” energy drinks.
155 Sixthly, Frucor submits that Frucor’s use of “V” Green as a trade mark is further demonstrated by Mr Chandler’s evidence. It submits that, based on the results of the surveys, customers recognise “V” Green as a badge of origin for “V” energy drinks.
156 Frucor acknowledges its use of the “V” logo and accepts that, in the period up to the filing date, it used the “V” logo as a trade mark. It submits, however, that this use does not mean that it did not also use “V” Green as a trade mark. It submits that “V” Green as used by it was not a subsidiary feature of the get up of “V” energy drinks, but a key component—a component that made the “V” energy drinks recognisable without recourse to the “V” logo. Frucor refers to the fact that Study 1 and Study 2 were conducted without reference to the “V” logo.
157 With respect to factual distinctiveness, Frucor relies principally on the results of Study 1 and Study 2. It also relies on Mr Nader’s evidence that he finds that the use of “V” Green on Frucor’s packaging distinguishes “V” energy drinks from other products, including those that use green in their packaging. Further, Frucor relies on its internal research as noted in Mr Lamb’s evidence.
158 Frucor submits that, cumulatively, this evidence clearly shows that its use of “V” Green as the mark has been substantial, consistent and conspicuous, and that it is clear that “V” Green in fact distinguished “V” energy drinks before the filing date.
CCC’s submissions
159 CCC submits, firstly, that Frucor has not shown use of “V” Green in relation to the designated goods, namely energy drinks in class 32. CCC’s point is that Frucor has not shown that it has used “V” Green as the colour of the drink itself (that is, the liquid), which is undeniably a different colour.
160 Secondly, CCC submits that, from an objective viewpoint, Frucor has not used “V” Green as a trade mark. It submits that this question must be decided in the correct context, which is the trade in non-alcoholic beverages. In that trade, colours have been used traditionally to denote flavours and variants. Frucor has done so in relation to its “V” energy drink range. In that setting, “V” Green does not function as a trade mark.
161 Further in this connection, CCC points to Frucor’s prominent use of the distinctive “V” logo on its energy drinks, including on the variants which make minimal use of “V” Green. CCC submits that this strongly suggests that “V” Green does not alone function as a badge of origin, if it functions as a badge of origin at all. It is the distinctive “V” logo that functions as the badge of origin for “V” energy drinks.
162 Thirdly, CCC submits that Frucor has not established that its use of “V” Green resulted in that colour becoming distinctive in fact before the filing date. It cautions that evidence of promotion and use does not, without more, demonstrate distinctiveness. Further, it submits that mere association through advertising and publicity is not sufficient to establish the level of distinctiveness required. CCC submits that Mr Chandler’s evidence concerning the results of the two studies is “underwhelming”. It points out that, taken at its highest, Study 1 shows that only 24% of the total sample identified Pantone 376C with Frucor’s “V” energy drinks and that in Study 2 (which directed participants to think of the energy drinks category) the figure was 55%.
Conclusion
163 I accept that Frucor’s use of “V” Green before the filing date was, in Frucor’s words, substantial, consistent and conspicuous. I have no doubt that, before the filing date, those familiar with Frucor’s “V” energy drinks would have associated “V” Green as the colour of Frucor’s core energy drink product. But, despite this, and the extensive use of “V” Green exemplified in the evidence, I am not persuaded that, in the context and setting of that use, it functioned as a trade mark.
164 There are two significant matters that bear on my conclusion. The first is the consistent presence and dominating display of the distinctive “V” logo on the containers used for the range of “V” energy drink products, as well as its consistent and prominent presence in Frucor’s promotional and marketing material. I have no doubt that, before the filing date, consumers of energy drinks, and consumers of non-alcoholic beverages more generally, would have seen that logo functioning as the badge of origin for those particular goods.
165 The second matter is the context and setting in which “V” energy drinks are sold and marketed. It would be too narrow a view to confine that context and setting to “energy drinks”. The planograms and photographic evidence of store displays relied on by Frucor show that energy drinks, as a sub-category, are sold alongside other non-alcoholic beverages, including what I would describe as soft drinks, sports drinks, fruit juice drinks and bottled water. Indeed, the fact that Frucor commissioned Mr Chandler to conduct Study 1 shows that its own marketing interests for “V” energy drinks did not and do not lie solely within the narrow confines of an “energy drink” market.
166 In this broader context and setting, colour is used to denote not merely product flavour, but, more generally, some varietal characteristic of the beverage—for example that it is “sugar free”. Frucor’s own use of colour before the filing date shows that, in relation to its own “V” energy drink range, colour was used to denote varietal differences, and to distinguish products in the range from each other and from its core product—the hero in the range. I refer again to Mr Lamb’s timeline reproduced in the Schedule to these reasons, which shows how the range of “V” energy drinks was presented to consumers. This is clearly how Frucor intended to use colour, and clearly how it perceived and anticipated that consumers would respond to that use. Although Frucor’s use of “V” Green was pervasive and no doubt fundamental to its whole marketing strategy, it was, nonetheless, reminiscent of its core product. In this way, Frucor’s use of “V” Green was essentially descriptive, not distinctive in the trade mark sense. It denoted the core product in the “V” energy drink range. I am not persuaded that, somehow, consumers would understand that colour in relation to the core product was being used differently to colour in relation to other varieties within the “V” energy drink range, or any differently from how colour was and is used descriptively across the range of non-alcoholic beverages sold through trade channels such as supermarkets and convenience stores.
167 I am persuaded, therefore, that consumers would have regarded “V” Green as designating the core product, and nothing more. In saying this, I recognise that more than one trade mark can be used in relation to a given product. But, in light of the evidence before me I am not satisfied that, before the filing date, “V” Green functioned as a separate trade mark alongside and independently of the “V” logo.
168 Mr Chandler’s evidence does not persuade me to a different point of view. I have some concerns about the reliability of the surveys undertaken in Study 1 and Study 2, particularly in relation to the selection of the samples used. But I do not propose to dwell on these matters, still less reach a view on all of CCC’s criticisms. Indeed, I would have some difficulty in comfortably reaching a concluded view on CCC’s criticisms given the absence of a countervailing and tested body of expert evidence dealing with those criticisms. (CCC filed an affidavit from an expert but, as matters transpired, it did not read that affidavit.)
169 Taking the results of the surveys at face value, I am not surprised that there is significant consumer identification of Pantone 376C with the “V” energy drink. Mr Chandler’s work seeks to quantify that identification as at January 2015 and January 2016, and to express the conclusion that substantially similar results would have been obtained had the surveys been conducted before the filing date, given the 13 years of promotion of “V” energy drinks by Frucor up to that time. I now have that evidence and have been able to draw my own conclusions from it—which I have expressed above. What I do not accept is that Mr Chandler’s studies show that “V” Green was used by Frucor as a trade mark before the filing date, even assuming the result of the surveys to be accurate and representative of the perceptions of the Australian public as at the filing date.
170 In this connection, I note Mr Chandler’s conclusion from Study 1 that Pantone 376C is an element of Frucor’s brand identity that has properties that go well beyond decorative or functional attributes, and distinguishes Frucor’s “V” energy drinks from the energy drinks of other traders. If by that statement Mr Chandler intended to say that, before the filing date, Pantone 376C functioned as a trade mark in relation to energy drinks, I do not accept it. Further, as I have said, I do not accept that such a conclusion can be drawn from the studies.
171 The first matter to note in this regard is that evidence of an association (or, I would add, identification) of a sign, including a colour, with a particular product does not mean, without more, that the sign is functioning or has functioned as a trade mark in relation to that product. One needs to have an understanding of how the sign was used, in the proper context and setting, before that conclusion can be drawn. Moreover, the conclusion is not purely a factual one. It requires an understanding of what is meant by trade mark use for the purposes of the Act. The surveys do not deal with these considerations.
172 The second matter to note is the form of the survey questions used for the studies. The questions addressed to the participants in Study 1 distinguished between colours and brands. This is illustrated by Questions 1 and 2.
173 Question 1 was:
Please look at each colour and indicate if you identify it with one or more brands of drink that you could buy at a convenience store or supermarket?
174 Question 2 was:
You indicated that you identify this colour with a brand of drink. Please type the name of the brand or brands below. If you have more one [sic] brand, use a separate box.
175 In later questions, participants were asked questions about identified brands of drink, specifically “Monster”, “Red Bull”, “Mother” and “V”. These are brands of energy drinks. It is clear that the colours about which participants were asked were not themselves presented as brands, but colours identified with brands. I have no reason to think that participants in the survey would have viewed the questions differently.
176 I observe that the questions addressed to the participants in Study 2 also distinguished between colours and brands. Participants were prompted to nominate the brands of energy drinks that came to mind, without any visual or verbal cues. They were then asked to look at colours and indicate whether they identified them with one or more brands of energy drink they would buy at a convenience store or supermarket. Next, they were asked to state the name of the brand or brands by reference to the colour(s) they nominated. Once again, it is clear that the colours about which participants were asked were not presented or understood as brands, but colours identified with nominated or identified brands.
177 As I have noted, in his evidence Mr Chandler drew a distinction between forming an association between a sign and a product, and identifying a sign with a product, on the basis that identification connotes a stronger connection than mere association. I do not accept that the linguistic distinction Mr Chandler draws—assuming it to be meaningful—bears upon whether there has been trade mark use. In any event, I am not persuaded that the survey participants would have been attuned to the subtleties of Mr Chandler’s reasoning on this matter when they answered the survey questions. I doubt, for example, that they would have failed to answer a survey question because, intellectually, they had reached a level of satisfaction commensurate with an “association” but not an “identification”.
178 These conclusions are sufficient to enable me to conclude that Frucor has not established the requirement of s 41(6)(a) of the Act. It follows that the mark applied for, even assuming it to be unambiguously Pantone 376C, is to be taken as not capable of distinguishing the designated goods—energy drinks—from the goods or services of other persons. Therefore, the mark cannot be registered by dint of s 41(2) of the Act.
179 Before passing from this topic I should record that I am not persuaded that Frucor has failed to establish the requirement of s 41(6)(a) because the colour of the liquid of its core product is not “V” Green. It would be enough for Frucor to establish trade mark use and factual distinctiveness based on packaging
Does the Court have power to amend the application?
Frucor’s submissions
180 Frucor submits that, in this appeal, the Court has jurisdiction and power, pursuant to s 63 of the Act, to make an order directing amendment of the trade mark application. It relies on the reasoning in Genetics Institute Inc v Kirin-Amgen Inc [1996] FCA 540; (1996) 67 FCR 527 (Genetics Institute), a case dealing with an appeal to this Court under s 60(4) of the Patents Act from a decision of the Commissioner of Patents (the Commissioner) in proceedings opposing the grant of a standard patent. The question in that case was whether, on such an appeal, the Court, when exercising the powers conferred by s 160 of the Patents Act, could order that a patent application proceed to grant subject to amendments being made.
181 Section 160 of the Patents Act is in materially the same terms as s 197 of the Trade Marks Act. It confers power on the Court, when hearing an appeal against a decision or direction of the Commissioner, to, amongst other things, affirm, reverse or vary the decision under appeal or give any judgment, or make any order, that, in all circumstances, the Court thinks fit.
182 It is, with respect, instructive to set out Heerey J’s reasoning and conclusion at 529B-G concerning the scope of the powers conferred by s 160 in relation to the amendment of a patent specification:
On the face of s 160, an order that the Commissioner proceed to grant a patent subject to amendments considered appropriate by the Court would come within the expression “any order” in para (e). I think that conclusion follows as a matter of ordinary language. Subject only to having some connection with the subject matter of the appeal, “any order” means any order. This is the more so in a context when the appeal is from a decision which could (as it did in the present case) include a direction that amendments be made.
In any case, an order directing amendments to claims differing from those directed by the Commissioner would amount to a variation of the Commissioner's decision within the meaning of s 160(d).
Since the establishment of the modern appellate court by the English reforms of 1875 and their Australian counterparts, statutes have usually (indeed invariably as far as my experience extends) conferred on the appellate court a right to vary the decision under appeal. The inherent unpredictability of litigation would make absurdly restrictive any provision that confined an appellate court to upholding or reversing in toto the decision below. In the particular context of patent litigation there is all the more reason to think that the legislature intended the appellate court to have wide powers, and at the very least the power to do everything that the Commissioner could have done in making the decision under appeal. Patents are often complex documents and can deal with technology at the very edge of human understanding. An appeal under s 60(4) can involve evidence quite different to that which was before the Commissioner. New arguments may be advanced and new insights obtained. There may be totally new grounds for concluding that, speaking hypothetically of course, a decision to proceed to grant a patent was correct but that amendments not considered by the Commissioner (perhaps because they arise from new arguments or new evidence) should be directed by the Court.
In arguing against this construction senior counsel for Genetics contended that the jurisdiction of the Court is limited to a decision of “the case” referred to in s 60(1), that is to say whether the patent should proceed to grant. However, “the case” is not limited, as counsel argued, to a jurisdiction to deal with a patent application as accepted; one need only point to the power conferred on the Commissioner himself to direct amendments. I do not think s 60 can be read independently of the rest of the Act and in particular s 160. “The case” in s 60(1) in my opinion comprehends all issues relating to the grant of the patent, including amendments. These are matters which were before the Commissioner and are also before the Court.
The fact that s 104(7) confers an independent right of appeal against a discrete decision of amendment does not lead logically to the conclusion that the jurisdiction under s 60(4), amplified by s 160, excludes questions of amendment being dealt with by the Court.
183 Frucor submits that this reasoning applies analogously to an appeal under s 56 of the Act in relation to a trade mark opposition. Stated shortly, Frucor submits that “the proceedings” which the Registrar must decide under s 55 of the Act are not limited to dealing with the trade mark application as accepted, just as “the case” which the Commissioner must decide under s 60(1) of the Patents Act is not limited to the patent application as accepted. Frucor submits that “the proceedings” in s 55 of the Act comprehend all issues relating to whether to register or refuse to register the mark applied for, including whether the application should be amended. Frucor submits that since all issues were before the Registrar then, on appeal, all issues are before the Court.
184 Frucor also calls in aid a number of cases in which it has been accepted, it seems without debate, that, in an appeal to the Court from a decision of the Registrar, the Court does have power to amend a trade mark application: Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551; (2002) 126 FCR 525 (Philmac); Philmac Pty Ltd v Registrar of Trade Marks (No 2) [2003] FCA 207; (2003) 57 IPR 526 at [3]-[6]; Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373; (2014) 106 IPR 281 at [231] (Phone Directories); Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156; (2015) 237 FCR 388 at [16].
185 In its written closing submissions, Frucor submitted that the amendment it seeks would not offend s 65(2) because it would not substantially affect the identity of the mark. It argued, firstly, that “the Mark already refers to a green swatch … where the endorsement to the Mark makes clear that the shade is Pantone 376C”. Thus, “the amendment would not extend the Mark claimed”. Secondly, it argued that “the amendment would merely resolve an ambiguity, it would create no relevant change in meaning in respect of the Mark”.
186 In oral submissions, Frucor adopted a different position. It now accepts that if the application is ambiguous as to the identity of the mark—as I have now found to be the case—then it is difficult to see how the amendment sought would not substantially affect the identity of the mark. Frucor now asks that the Court exercise the power to amend only if it comes to the view that the colour of the mark applied for is, unambiguously, Pantone 376C. It does so on the basis that, even though such an amendment would not, in those circumstances, be required, it would, nonetheless, be beneficial.
CCC’s submissions
187 CCC submits that the Court does not have jurisdiction to amend the application in the manner sought by Frucor and that, even if it did, the Court would not make such an order as a matter of discretion under s 197 of the Act because to do so would violate the statutory scheme provided by ss 63 and 65. CCC submits further that the Court would not make the amendment sought because it would substantially affect the identity of the mark at the time when particulars of the application were published under s 30 and thus be contrary to s 65(2) of the Act.
188 As to the question of jurisdiction, CCC submits that an appeal to this Court under s 56 of the Act is from a “decision” of the Registrar under s 55. As I have noted, the appeal is to determine, on the merits, the same question that was before the Registrar. CCC submits that, here, the question before the Registrar was whether the mark should be registered or whether registration should be refused. The question whether an amendment should be made to the representation of the mark was not before the Registrar and no decision on that matter was made, even though the delegate commented in passing that an amendment to the representation under s 65(2) would not be allowable.
189 As to the discretionary exercise of the power under s 197, CCC submits that to amend the representation in the context of the present appeal would undermine substantially the statutory process for making amendments which entrusts the exercise of power under s 63 to the Registrar, with an appeal lying to the Court from a decision made by the Registrar in that regard.
190 In this regard, CCC places reliance on Lehane J’s observations in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816; (1999) 44 IPR 551 (Philips). In that case, the respondent sought by way of cross-claim a declaration that an application for a shape mark pending before the Registrar was not registrable and that the applicant for the mark (who was also an applicant in the proceeding) be ordered to withdraw the application. When dealing with this issue, Lehane J said (at [63] – [65]):
63 In considering the exercise of the Court's discretion it is important to keep in mind the essential elements of the statutory procedure. A person who meets the requirements of s 27 may apply for registration of a mark. The Registrar must publish particulars of the application (s 30) and must examine the application and report on it (s 31). The Registrar determines the class or classes in which the relevant goods or services are comprised (s 32). The Registrar must, after examining the application, accept it unless it has not been made in accordance with the Act or there are statutory grounds for rejecting it. The Registrar must not reject an application without giving the applicant an opportunity of being heard (s 33(4)). The Registrar's decision must be notified to the applicant and published in the Official Journal. The applicant may appeal to the Court against a decision either to reject the application or to accept it subject to conditions or limitations (s 35).
64 Up to that point, there is no provision for intervention by third parties. They may discover, through the Official Journal, what is going on; but the matter is simply between the applicant and the Registrar, representing the public interest. Third parties enter into the picture when, and only when, an application has been accepted. A third party may then (s 52) lodge a notice of opposition. The Registrar must give both the opponent and the applicant an opportunity of being heard (s 54) and, having done so, the Registrar must decide either to register the trade mark (with or without conditions or limitations) or to refuse registration (s 55). Either the applicant or the opponent may appeal to the Court from the Registrar's decision (s 56).
65 Plainly, if the Court were readily to intervene, at the suit of a potential opponent, before the Registrar had completed the examination of an application, the statutory scheme would be significantly undermined. The Court would be deprived of the benefit of the reasons of the Registrar for rejecting an application or for granting or refusing registration, particularly in relation to matters of impression and fact which the Registrar is specifically required to consider and decide (see particularly s 41). Remington suggested that that, these days, is a matter of little account. Perhaps it is true that courts are now less reluctant to differ from the Registrar than they may once have been, but Remington's broad submission is contrary to the course of authority: Registrar of Trade Marks v Muller (1980) 144 CLR 37 at 41.
191 His Honour was not persuaded that it would be right for the Court to intervene in the statutory process before the Registrar. In the result, his Honour refused to grant the declaration and injunction that had been sought. CCC argues that the same approach should be adopted in the present case.
192 CCC further submits that the amendment sought would likely prejudice other owners of registered trade marks. It referred in particular to the owner of the colour mark for Pantone 375 which was registered in a number of classes, including class 32, who would be likely to be interested in contesting the amendment sought. CCC argued that it could be assumed that other opponents to the present application (Monster Energy Company and Nestlé), whose oppositions have not yet been determined, would also wish to be heard on such an application. None of these parties are before the Court.
193 As to the identity of the mark, CCC submits that the amendment would see the present representation of the mark replaced with another representation of a different colour. CCC submits that such a change would plainly substantially affect the identity of the mark applied for. In its written closing submissions, CCC submitted that Frucor must acknowledge this to be the case because it only seeks the amendment if the Court is not persuaded that the colour of the mark applied for is Pantone 376C. This submission must now be seen in light of Frucor’s changed stance, which is that it only seeks amendment referable to the Registrar’s powers under s 63 and s 65(2) if the Court is of the view that the colour of the mark applied for is, unambiguously, Pantone 376C.
Conclusion
194 Frucor seeks an order directing the Registrar to register the mark, provided the representation of the mark attached to the application is amended to show the colour Pantone 376C. So expressed, the order assumes that Frucor has, in this appeal, established that it has used Pantone 376C as a trade mark and that the colour of the mark is, unambiguously, Pantone 376C. It further assumes that because of the extent to which it has used the mark before the filing date, it (the mark) does distinguish the designated goods as Frucor’s goods. I have found that Frucor has not established the requirement of s 41(6)(a) of the Act (even on the assumption that the colour of the mark is Pantone 367C). The inability of the mark to satisfy s 41(6)(a) and hence the requirement of s 41(2), cannot be cured by the amendment that is proposed. Therefore, I refuse to amend the application because to do so would lack utility.
195 Turning specifically to the Court’s powers of amendment on appeal, I would follow Heerey J’s reasoning in Genetics Institute. I do not see how an appeal to this Court from a decision of the Registrar in opposition to registration proceedings under the Trade Marks Act differs materially from an appeal to this Court from a decision of the Commissioner in opposition to grant proceedings under the Patents Act. Whilst I acknowledge that, in the present case, an application under s 63 of the Trade Marks Act was not before the Registrar, the registrability of the mark the subject of the application was in contest. In the proceedings below, the Registrar had the power to permit the application to be amended subject to the constraints placed upon the exercise of that power by the Act. Given the nature of the “appeal” to this Court, the Court’s power to quell the controversy as to the registrability of the mark—the subject matter of the appeal—cannot be more limited than the Registrar’s power. Further, it cannot matter that the Registrar was not asked to exercise the power of amendment, just as it cannot matter that an opponent might seek to raise additional or new grounds of opposition, or that the parties might seek to adduce different evidence to the evidence that was before the Registrar or raise new or different arguments. The opposition proceeds afresh before the Court on the subject matter that was before the Registrar and is adjudicated upon accordingly.
196 I am fortified in proceeding in this manner given what seems to have been the Full Court’s endorsement in New England Biolabs Inc v F Hoffman-La Roche AG [2004] FCAFC 213; (2004) 141 FCR 1 (New England Biolabs) of Heerey J’s conclusion in Genetics Institute. In that case—which concerned the limits of the Court’s power when considering an appeal from a decision of the Commissioner allowing amendments to a complete specification under s 104 of the Patents Act—the Full Court confirmed that the deployment of judicial power in an appeal from a decision of the Commissioner is over the same subject matter that was before the Commissioner when exercising executive power. In that connection, the Full Court said:
45 Implicit, however, within the use of the word “appeal” and the phrase “appeal against the decision of the Commissioner”, and without any other description of the controversy to be quelled by the exercise of judicial power, is the identification of the matter or controversy – the subject matter of the deployment of the respective powers – being the same in each case. The simplicity of the enunciation of what the Court is doing: hearing an appeal against a decision of an administrator by exercising for the first time the judicial power of the Commonwealth in the original jurisdiction leads one to conclude that the Court is dealing with the same subject matter as was dealt with by the Commissioner.
46 To the extent that the Act and regulations delimit the boundary of the subject matter for decision by the Commissioner by restricting the decision to certain criteria or grounds, or by limiting what is permitted to be raised by an opponent in the application, or by eliminating any element of discretion in the making of the decision, they plainly confine the controversy before the Commissioner. We are of the view that the notion of an appeal to the Court in this context evinces a Parliamentary intention that the same subject matter be dealt with by the Court as was dealt with by the Commissioner (but this time by the deployment of judicial power). Thus, in order to conclude that the Court has a wider task by reference to different or wider criteria than that undertaken by the Commissioner one would need to identify some factor either from the nature of the judicial power or from some statutory provision upon which to base such a conclusion.
47 It was not said by the appellant that the exercise of the judicial power, of itself, gave the Court a discretion to refuse to grant leave to amend under s 104(7) of the Act in circumstances where the Commissioner had no such discretion under s 104(3). The different nature of the power (judicial rather than administrative) being exercised may lead to certain differences of procedure and approach, and will lead to a different character of decision with different attendant incidents. A discretion of the kind asserted by the appellant to reside in the Court in hearing an appeal under s 104(7) is not a necessary incident of judicial power; rather, if it exists, it is an incident of the task given to the Court (necessarily by statute) to be undertaken. That the judicial power is exercised to quell a controversy does not of itself introduce a general discretion affecting the question as to whether the controversy should be quelled one way or another. Rather, if a discretion resides in the Court to take into account certain matters in deciding whether to take one course or another, that is so because of the delimitation of the boundaries of the subject matter for decision by the Court - that is, the delimitation of the task of the Court. These limits are to be found in the Act or some other relevant statute.
197 The issue in New England Biolabs was whether the Court could refuse to allow an amendment to a patent specification on discretionary grounds that travel beyond the bounds of the discretion that can be exercised by the Commissioner under the same provision—s 104. The Full Court reasoned that the plenary powers conferred by s 160 of the Patents Act cannot be deployed (as the appellant in that case argued they could be deployed) to achieve that outcome. The Full Court explained the position as follows:
49 The subject matter of any appeal against a decision of the Commissioner is limited by the Act and regulations as is also the decision or function that was previously before the Commissioner (the “decision” against which the appeal is sought). This is not to give any restricted or restrictive interpretation to otherwise ample powers in s 106 [quaere s 160?] of the Act or ss 19, 22 and 23 of the Federal Court of Australia Act: cf the numerous High Court decisions referred to in Hewlett Packard v G E Capital [2003] FCAFC 256; 203 ALR 51 at [187]. Rather, it is to recognise that the provision for an appeal to the Court against a decision of an administrator in this statutory context is to confer judicial power on the Court to hear and decide the same subject matter as was before the administrator, such subject matter having the same boundaries and limits as existed under the statute before the administrator. One boundary of the subject matter for decision was that the opponent (the appellant) was restricted to opposing amendments sought under s 104 (1) to grounds found in s 102; another boundary was the statutory and regulatory regime which precluded the Commissioner looking beyond a group of factors which did not include a general discretion which could be informed by the asserted misconduct of the respondent (as applicant). These boundaries are not a limit or fetter on the exercise of the executive power by the Commissioner; nor are they a limit or fetter on the exercise of the judicial power of the Commonwealth by the Court. They are part of the identification of the controversy over rights, privileges and entitlements that are entirely creatures of statute. One incident of the right to ask for leave to amend and of the right of opposition thereto is that allowance of any amendment is to be decided by reference to limited criteria: cf R v Quinn at pp 5 and 12.
198 The Full Court explained the directed role that s 160 plays in this context, which is not to widen the subject matter of the appeal:
50 The appellant referred to a number of decisions of this Court in illustration of the asserted effect and significance of s 160: F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56 at [38] dealing with the nature of evidence before the Court; Frederikshavn Vaerft A/G v Stena Rederi Aktiebolag (2002) 124 FCR 243 dealing with the substitution of the opponent; EI Du Pont De Nemours and Company v ICI Chemicals & Polymers Limited (2003) 128 FCR 392 dealing with fresh grounds and particulars of opposition; Genetics Institute Inc v Kirin-Amgen Inc (1996) 67 FCR 527; and Merck & Co Inc v Sankyo Co Ltd (1992) 23 IPR 415 dealing with the power to order amendments. None of these cases assists the appellant. That the Court relies on evidence different from the material before the Commissioner is only to be expected as a consequence of the judicial power being exercised. The substitution of an opponent is a procedural matter within the boundaries of the dispute, permitted before the Commissioner and within the scope of an ample power such as s 160(e). The raising of fresh grounds (within the statutory limits of the subject matter of the decision) merely reflects the original nature of the jurisdiction in the Court and the fact that the subject matter is being litigated for the first time in the exercise of judicial power. The direction by the Court that a patent be granted conditional on amendments which appear appropriate as was done by Heerey J in Genetics Institute occurred in an appeal under s 60(4) of the Act being an appeal (as his Honour said at p 529) from a decision which could include a direction that amendments be made. In Merck & Co Inc v Sankyo Co Ltd Lockhart J was dealing with s 60(5) of the Patents Act 1952.
(Emphasis added)
199 The emphasised part of the passage quoted above is important. The point made by the Full Court is that, in opposition proceedings concerning the grant of a standard patent, the exercise of the Court’s power under s 160 of the Patents Act to direct that the patent application proceed to grant subject to amendment, is not (of itself) a widening of the subject matter of the appeal. The Full Court’s observation is also expressed in terms that would stand as an implicit acceptance that the Court’s exercise of power to direct an amendment is not conditioned on the Commissioner having exercised that power in the opposition before him or her.
200 If that be so then, in an appeal from a decision of the Registrar in opposition to registration proceedings, the exercise of the Court’s power under s 197 of the Act to direct that the trade mark proceed to registration subject to amendment, cannot be a widening of the subject matter of the appeal, nor can the Court’s power to direct such an amendment be truncated by the fact that, in the opposition before the Registrar, the Registrar did not exercise that power, irrespective of whether the trade mark applicant requested its exercise.
201 It is also to be noted that, applying Heerey J’s reasoning to the present context, the power to amend in an appeal derives from s 197 of the Act, not s 63 or s 65 as Frucor’s submissions contemplate. In terms, s 63 is a conferral of power on the Registrar, with an appeal lying to the Court under s 67 of the Act. There is no provision in the Act that confers the Registrar’s powers under Pt 6 on the Court although, in an appeal under s 67, the subject matter of the appeal would have the same boundaries and limitations that exist under the Act in respect of the Registrar’s exercise of power: New England Biolabs at [49].
202 Some cases have treated the Court’s power to amend as deriving from the power specifically conferred on the Registrar. For example, in Philmac—which was an appeal under s 35 of the Act from a decision of the Registrar rejecting a trade mark application for acceptance—the agreed position of the parties was recorded by Mansfield J as follows:
8 The power to amend an application for the registration of a trade mark is vested in the Registrar by s 63 and s 65 of the Act. The parties accept that, on this application, that power is vested in the Court in lieu of the Registrar. Section 65 relevantly provides that an amendment may be made to the representation of a trademark if the amendment does not substantially affect the identity of the trademark: s 65(2). An amendment may be made to any other particular specified in the application unless the amendment would have the effect of extending the rights that, apart from the amendment, the applicant would have had under the registration if it were granted: s 65(5).
203 Similarly, in Phone Directories—an appeal in opposition to registration proceedings—Murphy J at [231] considered that the Court had power to amend a trade mark application under s 65(7) of the Act. As events transpired, his Honour did not take the course of amending the application before him because the parties did not ask him to do so.
204 In my respectful view, the jurisdiction and powers of the Court in an appeal against a decision, direction or order of the Registrar are governed by Pt 18 of the Act. Section 197 is the source of the Court’s powers on such an appeal. However, the deployment of those powers to direct or effect an amendment to a trade mark application must be exercised conformably with the boundaries and limitations imposed on the Registrar’s powers of amendment, as would also be the case if the Court were hearing an appeal under s 67 of the Act from a decision of the Registrar to either allow or refuse an amendment to a trade mark application.
205 In the present case I proceed, therefore, on the basis that the powers conferred by s 197 of the Act should be exercised conformably with s 65, and in particular s 65(2), with the consequence that an amendment should not be made to the representation of the mark if that would substantially affect the identity of the mark at the time when particulars of the application were published.
206 In my view, the amendment sought by Frucor would offend s 65(2) if such an amendment were now to be sought before the Registrar. The substitution of a markedly different green-coloured swatch for the swatch that now comprises the representation would substantially affect the identity of the mark. This is so, even though the description provided by Frucor in its application refers to the colour as “Pantone 376c”. Other aspects of the description make clear that the mark applied for is the green colour shown in the representation, even though the description misnames that colour. Whilst the amendment sought might be said to be one that would resolve an ambiguity by nominating one colour over another, it is nonetheless an amendment of the most fundamental kind that strikes directly at the identity of the mark. This is not an amendment that can be allowed once particulars of the trade mark application have been published. Frucor now accepts as much.
207 Therefore, even absent the impediment that an amendment to the trade mark application would lack utility in the present case, I would refuse the amendment sought.
208 Finally, for completeness I should record that, had the position been otherwise, I would not have accepted CCC’s submission, (based on Lehane J’s observations in Philips), that granting the amendment to the application sought in this appeal would defeat the statutory scheme for amending trade mark applications. The position in Philips is completely different to the case at hand.
Should leave be granted to enable Frucor to further amend its notice of appeal?
Introduction
209 Frucor submits that leave should be granted to permit it to further amend its notice of appeal in accordance with the draft further amended notice of appeal annexed to its interlocutory application filed on 24 February 2017. The draft seeks an order that the application be amended so that the representation attached to the application shows the colour Pantone 376C and that the mark, as so amended, be registered (the amendment order). The notice of appeal as originally filed sought a similar order, albeit that the order was directed to the Registrar to register the mark as amended. However, the further amendment to the notice of appeal that is now proposed raises for the first time s 65A as a source of power by which Frucor’s trade mark application can be amended in the way it seeks.
210 Section 65A confers power on the Registrar to amend a trade mark application where particulars of the application have been published and the amendment is not one that can be made under s 65. I have concluded that the amendment sought, in the present case, cannot be made under s 65.
211 Further, an amendment under s 65A can only be made to correct a clerical error or an obvious mistake. Even then, the Registrar must be satisfied that it is fair and reasonable, in all the circumstances of the case, to make the amendment under that provision.
Frucor’s submissions
212 Frucor submits that a clerical error or obvious mistake was made in the process of scanning the swatch used for the New Zealand trade mark application and uploading the resulting electronic image when lodging the Australian trade mark application online. Frucor submits that it is clear that Ms Peacock thought she was uploading a Pantone 376C-coloured swatch.
213 Frucor submits that it would be fair and reasonable to allow the amendment it seeks. Based on Mr Armitage’s evidence of searches of the Register undertaken as at 19 May 2017, Frucor says that there are no other single-coloured marks referring to Pantone 349, Pantone 375 or Pantone 376C in classes 5 (dietary supplements), 29 (milk beverages), 30 (coffee/tea-based beverages), 32 (non-alcoholic beverages and energy drinks) or 33 (alcoholic beverages), other than Frucor’s subsequent application for Pantone 376C. Pantone 349 and Pantone 375 are other green colours. I assume that Frucor makes reference to them because of the presence on the Register of a composite mark in classes 6, 32, 33, 35, and 43 which includes those colours.
214 Frucor submits further that, to the extent that there are other marks on the Register that use a green colour in the classes to which it has referred, they are clearly distinguishable from both the coloured swatch and the description of the mark provided with the present trade mark application, and are not likely to be affected by any amendment. Frucor submits that such marks appear either in respect of unrelated goods (such as meat products) or comprise composite marks of a word and a colour, where the dominant element is not the colour green alone.
215 Frucor’s reliance on Mr Armitage’s affidavit is problematic because, as I have noted above, the evidence he gave was admitted provisionally pending the outcome of Frucor’s application to further amend the notice of appeal. I did not admit the evidence to support that particular application.
216 Section 65A imposes a requirement on the Registrar to advertise the requested amendment in the Official Journal. Following that step, the amendment can be opposed by any person. There is, however, an exception to this. If the Registrar is satisfied that a request for an amendment would not be granted even in the absence of opposition under s 65A(4), the Registrar need not advertise the request, and he or she must refuse to grant it. Further, there can be no opposition to the requested amendment: s 65A(5).
217 Noting these procedural requirements, Frucor, in its written closing submissions, submitted that a particular procedure should be adopted, on the assumption that leave to further amend the notice of appeal is granted to permit Frucor to seek the amendment order based on s 65A:
(a) First, the Court should determine whether the requirements of s 65A(2) are met—in other words, determine whether the amendment sought to the application is to correct a clerical error or obvious mistake, and whether it is fair and reasonable in all the circumstances of the case to make the amendment.
(b) Secondly, if satisfied that the requirements of s 65A(2) are met, the Court should make an order directing the Registrar to advertise the request for amendment in accordance with s 65A(3).
(c) Thirdly, if any person comes forward to oppose the amendment that is sought, the Court, or alternatively the Registrar, should then determine “the final question of amendment” in light of that opposition.
218 Implicit in this submission is the proposition that the Court has, and would be exercising, in conjunction with the Registrar, the power conferred by s 65A of the Act.
219 This is also problematic. In the course of Frucor’s oral submissions I raised the appropriateness of the Court determining whether the requirements of s 65A(2) have been met before the steps required by s 65A(3) and s 65A(4) are carried out. After all, the purpose of an opposition under s 65A(4) is to allow the opponent to be heard on all questions arising under s 65A, other than the question raised by s 65A(5). If the Court were to determine the s 65A(2) question in advance, then the remaining steps contemplated by Frucor in its written submissions would be a barren gesture. I should add that it is not clear to me what is envisaged by the Court or the Registrar then determining “the final question of amendment”, as Frucor proposed.
220 In the course of addressing this problem, Senior Counsel for Frucor advanced an alternative course, which was that the Court should determine the question arising under s 65A(5). He submitted that if the Court were not satisfied that the amendment to the trade mark application would not be granted even in the absence of an opposition under s 65A(4), then the matter should proceed in accordance with the process outlined in the written submissions—that is, the Registrar should be ordered to advertise the request for the amendment and the Court or the Registrar should then determine any resulting opposition.
CCC’s submissions
221 CCC opposes leave being granted to Frucor to further amend the notice of appeal. It submits that leave should not be granted for two reasons: first, futility; secondly, delay seen in the light of s 37M of the Federal Court of Australia Act 1976 (Cth) (the Federal Court Act) which requires the Court to apply its rules, including those relating to amendment, in a way that best promotes the “overarching purpose” identified in s 37M(1) of the Federal Court Act of facilitating the just resolution of disputes according to law and as quickly, inexpensively and efficiently as possible.
222 As to futility, CCC advances the following submissions.
223 First, CCC submits that the Court does not have jurisdiction, in this appeal, to entertain an amendment to the trade mark application and therefore make the amendment order in reliance on s 65A. This submission repeats the corresponding submission made by CCC with respect to the making of the amendment order in reliance on s 65 of the Act.
224 Secondly, CCC submits that an amendment to a trade mark application in reliance on s 65A can only be made after the procedures contemplated by the provision are carried out. CCC submits that the requirements of s 65A in this regard take the amendment order “outside the range of those which may be made pursuant to s 197 of the Act”. Further, CCC submits that it is likely that the other opponents to the present trade mark application would oppose any amendment to an application based on s 65A and that the Registrar, too, might wish to be heard on that question, given the existence of other pending applications for registration of green colours as trade marks.
225 Thirdly, CCC submits that an amendment to the trade mark application based on s 65A should not be made because to do so would peremptorily defeat the rights of the other opponents in the two pending oppositions.
226 Fourthly, CCC submits that the evidence does not establish either clerical error or obvious mistake that is required to enliven s 65A(2).
227 As to delay and the operation of s 37M of the Federal Court Act, CCC submits that Frucor’s application to amend its trade mark application based on s 65A is inordinately late and could have been made at any time after the filing date. It submits that the obvious time would have been after the Registrar refused to register the mark as presently applied for, on 22 June 2016.
228 Further, CCC submits that the “overarching purpose” referred to in s 37M of the Federal Court Act includes the efficient use of the Court’s judicial and administrative resources: Fraser-Kirk v David Jones Ltd [2010] FCA 1060; (2010) 190 FCR 25 at [26]. CCC submits that an amendment order based on s 65A would be a waste of those resources, having regard to the process suggested by Frucor for implementing the procedures required by s 65A.
Conclusion
229 I am not persuaded that leave should be granted to Frucor to further amend its notice of appeal to seek the amendment order based on s 65A of the Act.
230 First, the further amendment proposed to the notice of appeal would lack utility in light of my findings in relation to Frucor’s reliance on s 41(6)(a). Once again, Frucor’s failure to establish the requirement of s 41(6)(a) of the Act (on the assumption that the colour of the mark is, unambiguously, Pantone 376C), and hence the requirement of s 41(2), cannot be cured by the amendment that is proposed.
231 Secondly, even if this were not the case, I am not persuaded that either of the processes suggested by Frucor for accommodating the procedural requirements of s 65A are appropriate. I have already explained part of the reason why the process suggested in Frucor’s written closing submissions is not appropriate. I do not think that the alternative suggested in its oral submissions fairs better. I do not consider that it would be appropriate for the Court to determine the question under s 65A(5) in circumstances where it is contemplated that the Registrar should or could then determine other questions arising under that provision.
232 In this connection, the statutory procedure for making amendments to trade mark applications in reliance on s 65A is that the applicant for the mark makes a request for amendment to the Registrar, who must then advertise the request in the Official Journal and determine any opposition that is thereafter brought. This scheme is distinguishable from the procedure for making amendments under s 63 in reliance on s 65, where no advertising is required and no opposition procedure is provided for.
233 Division 2 of Pt 6 of the Regulations provides the machinery for filing and determining oppositions, including the manner in which any opposition hearing is to be held. Within that scheme, it is the Registrar who puts in train the publication of the request, and it is the Registrar who hears and determines the opposition, specifically as to whether the requirements of s 65A(2) are satisfied. The Registrar can also determine under s 65A(5) that the request for amendment not be granted, without advertising the request or entertaining an opposition.
234 All these decisions and functions under s 65A are entrusted by the legislature to the Registrar, not the Court. The involvement of the Court only arises in an appeal from a decision of the Registrar taken under the provision. It can be seen, therefore, that each alternative procedure proposed by Frucor subverts the scheme for making amendments in accordance with the provision by seeking to divide, impermissibly, aspects of the exercise of the power to amend between the Registrar and the Court.
235 Thirdly, it is not appropriate that an amendment application in accordance with s 65A be entertained at this late stage in CCC’s opposition to registration of the mark. The appeal against the Registrar’s decision has been heard and should now be determined. The alternative would be to stay the appeal while the procedures required by s 65A are carried out, and any resulting opposition to the amendment determined. It seems to me to be likely that there would be opposition to the amendment, not only by CCC but also by the other opponents to the present trade mark application who are presently waiting in the wings, and possibly others. It is a real possibility that there would be an appeal from the Registrar’s decision, whichever way the decision goes.
236 Another possibility is that the wide powers conferred on the Court by s 197 of the Act might accommodate the making of an amendment of the kind contemplated by s 65A. As I have summarised, CCC submits that the powers of the Court under s 197 do not go that far. I do not need to decide that question because, assuming s 197 to extend that far, I doubt that it would be appropriate for the Court to exercise its powers in a way that would curtail the requirements of s 65A for advertising, and hearing and determining any opposition. Frucor does not argue to the contrary.
237 Permitting Frucor to now seek an amendment based on s 65A of the Act would inevitably introduce further delay in determining the opposition, in circumstances where Frucor could have moved promptly to amend its trade mark application when the problem of the disconformity between the representation of the mark—the coloured swatch—and Frucor’s description of the mark, became apparent. Frucor has not placed any evidence before me as to when it first became aware of the problem. I note, however, that the problem was exposed in the declaration of Romy Mueller made on 14 October 2014, which was filed as part of CCC’s evidence in support of the opposition before the Registrar: see [56] of the delegate’s reasons. I proceed on the basis that Frucor has known of this problem since at least that time. Further, Frucor has not placed any evidence before me to explain its delay in seeking to amend its application in reliance on s 65A since October 2014 up to the filing of its interlocutory application on 24 February 2017. The delay in seeking an amendment to its trade mark application lies at its feet. The problem arising from the disconformity between the representation and the description is intractable, absent an appropriate amendment. The possible resolution of this problem commanded action from Frucor at the earliest opportunity. But Frucor elected not to seek an amendment. It sought to persevere with the trade mark application in its present form. I am not persuaded that Frucor should now be permitted to adopt a new tack and seek to invoke s 65A and the procedures it contemplates at such a late stage in the opposition. I accept CCC’s submission that Frucor’s delay in this regard has been inordinate.
238 There are other amendments that are sought which are of a mundane nature and are not objectionable. However, nothing of substance would be gained by filing of a further amended notice of appeal to incorporate these amendments, in light of the findings I have made.
Disposition
239 The interlocutory application filed on 24 February 2017 should be dismissed with costs. The appeal should also be dismissed with costs.
I certify that the preceding two hundred and thirty-nine (239) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates. |
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