Trade Marks – colour trade mark – Commissioner’s digitisation of application – inaccurate reproduction of Pantone colour – rectification application to correct error – Commissioner acknowledges error - Intervenor opposes rectification – rectification ordered – definition of error or omission – s 77 not a restriction on rectification – discretionary factors – consumer protection important – error treated as if it never existed – correction of register to named Pantone shade – Trade Marks Act 1994 (NZ) ss 76, 77, 158, 159

This was an originating application seeking rectification of the Trade Marks register in respect of registered trade mark for a colour green (Pantone 376C).  The rectification application was filed in the High Court pursuant to s 158(a) because, at the time of filing, there were pending appeals before the High Court in relation to alleged invalidity and non-use of the registered trade mark.  The rectification application was stayed pending these appeals.  The appeals were subsequently dismissed by the High Court (Energy Beverages LLC v Frucor Suntory New Zealand Ltd [2020] NZHC 3296) and the Court of Appeal (Energy Beverages LLC v Frucor Suntory New Zealand Ltd [2022] NZCA 536).

Facts

The applicant Frucor was the owner of registration 795206 for a shade of green colour (Pantone 376C) in respect of energy drinks in class 32.  Frucor filed an application to correct an error in the register namely that, when digitising the register, the Commissioner had (as result of technical problems) uploaded a dark green colour that did not match the Pantone 376C shade named in the written description of the trade mark. 

It was common ground that the scanned version which the Commissioner uploaded to the register did not match the colour in the application and that it was the Commissioner’s error that led to the wrong colour being depicted on the register [3 -4]. 

The Commissioner of Trade Marks filed a formal written statement with the Court pursuant to s 159 Trade Marks Act which acknowledged the error and proposed that the Commissioner correct the error by providing a more accurate visual representation of the trade mark Pantone 376C.  The statement set out the Commissioner’s view that the correction did not affect the validity of the registration “as the scope of the registration is defined by the written description with reference to Pantone 376C”. 

EBL, as an Intervenor, opposed the application on the basis that s 76 does not permit the Commissioner to change the colour of the registration shown in the register after the actual date of registration.  EBL asserted that to do so would be an alteration of the registered trade mark, being prohibited by s 77 of the Act [12].^[1]

EBL further claimed that the Court should decline to exercise its discretion to rectify because Frucor knew of the wrong colour and yet took no action until filing the rectification application in 2020.  Further EBL contended that if rectification were to be ordered:

(1)           any rectification should take effect from the date of the order (and not treated as if the error had never existed, being the default position in s 76(4) and;

(2)           rectification should be limited to replacing the erroneous scan with a scan of the original green swatch filed with the application and not Pantone 376C (named in the written description).

Held, ordering rectification of the register

Jurisdiction to rectify: s 76

(1)         The Court was satisfied that the requirements of s 76 had been met to allow the Court to correct the Commissioner’s error [31].  It was clear that the Commissioner had made an error in the register [23].  The words “error” or “omission” in s 76 bore their ordinary meaning with error including “something done incorrectly because of ignorance or inadvertence; a mistake” [24].  The Commissioner had made an error by placing on the register the dark green depiction of the colour Pantone 376C.  The Commissioner had acknowledged the error.  The registration was incorrect.  Whether by ignorance or inadvertence, it was a mistake [28] and [62].

Section 77

(2)         Section 77 does not operate as a restriction on the ability to rectify a trade mark under s 76 where there has been an error in the register [50] – [51] and [63].  The purpose and roles of ss 76 and 77 were quite different.  Section 77 applied in respect of altering a registered trade mark on the owner’s initiative where there was no error or omission to rectify or correct [38].  The MED departmental report on the Trade Marks Bill demonstrated that with s 77 the legislature was enacting a policy to provide certainty in the scope of registration and to prevent the trade mark owner from altering the registered trade mark after registration where there was no error or omission in the register [41]. 

Discretion

(3)         The Court was satisfied that there had been no active efforts by Frucor to portray the dark green representation as part of the registered trade mark [54].

 (4)         The Court was satisfied that the consumer protection factor of having a clear register indicating that the registered trade mark was valid and deemed to be valid since registration outweighed the threats of any perceived penalties to EBL.  The Court of Appeal had already determined that the registered trade mark with the colour described as Pantone 376C was valid.  The trade mark was deemed to be valid since registration by s 75 and that it was therefore appropriate to treat the error as if it had never existed [57 - 58] and [64].

What Colour 

(5)         The correction should be to Pantone 376C which was consistent with the Court of Appeal’s determination that the written description Pantone 376C should prevail [60] and [65].

 

^[1] Section 77 reads: 

            “The owner of a registered trade mark may not alter the registered trade mark after its actual date of registration”.