Coloured juice bottles not distinctive
Coloured juice bottles not distinctive - Griffith Hack
|17 March 2011|
|A recent Australian Trade Marks Office decision highlights the difficulty of registering colour marks where the goods bearing the colour mark are accompanied by brands and other distinguishing material. Essentially, colour marks “have a lot of work to do” to gain acquired distinctiveness - that is, to stand on their own as having gained a secondary meaning as denoting only the applicant’s goods. In the case, Grove Fruit Juice Pty Ltd  ATMO 1), Grove Fruit Juice Pty Ltd (Grove), an Australian fruit juice company, sought to register a mark for “fruit juices” described as “consisting of the white colour of the bottle in which the goods are sold”, and not limited to any particular shape of bottle. |
|Grove’s evidence was that it had used white-coloured bottles for its juices since 1996, 13 years before it sought to register the mark. Grove claimed that it adopted the white-coloured bottle mark as it was not a colour customarily chosen for juice bottles and created a point of difference. Grove also relied on the results of two market surveys which suggested that juices in white-coloured bottles were identifiable as those of Grove. Finally, Grove relied on significant sales and advertising of juices in white-coloured bottles.|
In considering the distinctiveness of the white-coloured bottle mark, the Hearing Officer applied the tests for distinctiveness of single colour marks set out in recent Federal Court decisions and asked: what is the likelihood that other fruit juice traders, being actuated only by proper motives, will think of the colour and will want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it? The Hearing Officer found that Grove’s mark lacked any inherent adaptation to distinguish since it is one which other traders would need to use to indicate the purity of their fruit juices and to protect their juices from the vitamin-destroying effects of UV rays. It did not help Grove's case that its own website referred to these functional benefits of its coloured bottles.
The Hearing Officer then went on to look at whether, because of the extent to which Grove had used the white-coloured bottle mark before the filing date, it did distinguish its juices from those of other persons. The Hearing Officer found that Grove’s evidence did not show that the mark had acquired a secondary meaning, noting that it is not safe to conclude that sales and advertising figures per se indicate that a trade mark has become distinctive in fact.
The case serves as a reminder of the difficulty in registering single colour marks where the goods bearing the colour mark are accompanied by brands and other distinguishing material. Trade mark owners cannot simply rely on evidence of sales or recognition in a general sense; rather, they must consciously and clearly market and advertise the colour as a brand, that is, as an indication of trade origin.
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