ENERGY BEVERAGES LLC v FRUCOR SUNTORY NEW ZEALAND LIMITED [2022] NZCA 536 [11 November 2022]

ENERGY BEVERAGES LLC v FRUCOR SUNTORY NEW ZEALAND LIMITED [2022] NZCA 536[11 November 2022]IN THE COURT OF APPEAL OF NEW ZEALANDI TE KŌTI PĪRA O AOTEAROACA38/2021[2022] NZCA 536BETWEEN ENERGY BEVERAGES LLCAppellantAND FRUCOR SUNTORY NEW ZEALANDLIMITEDRespondentHearing: 30 November and 1 December 2021Court: Cooper, Brown and Courtney JJCounsel: G F Arthur KC, R C Watts and A N Birkinshaw for AppellantA H Brown KC, A E Isaacs and S Aymeric for RespondentJudgment: 11 November 2022 at 10.30 amJUDGMENT OF THE COURTA The appeal is dismissed.B The appellant must pay the respondent costs for a standard appeal ona band A basis and usual disbursements. We certify for second counsel.____________________________________________________________________Table of ContentsPara noIntroduction [1]Obtaining and removing registered trade marks [5]Registration [5]Invalidity [10]Revocation [12]Factual background [13]The Assistant Commissioner's decisions [19]The use challenge [20]The validity challenge [22]The High Court judgment [25]The validity challenge [25]The use challenge [30]The issues on appeal [34]Issue 1: Did the Judge err in holding that the time bar in s 75prevents a challenge to the Registration under s 18(1)(a)? [35]Issue 2: Does the use of the phrase "predominant colour" causethe Registration to be unclear and for more than one sign? [55]The contest [56]The law and practice governing trade mark applications [61](a) A representation of the trade mark [61](b) Colour marks [66]The chronology of the application for TM 795206 [69]The meaning of "predominant" [74](a) Quantitative analysis [79](b) Qualitative assessment [82]Whether a registration may cover multiple signs? [90]Issue 3: Did the Judge err in holding that the Registrationshould be interpreted as being defined by the written descriptionof the colour on the register, namely Pantone 376C? [107]Issue 4: Does the difference between the darker shade of greenin the image on the register and written description Pantone 376Cmean the Registration is ambiguous and too imprecise? [117]Result [118]REASONS OF THE COURT(Given by Brown J)Introduction[1] Trade mark 7952061 of the respondent (Frucor) was registered on23 June 20122 (the Registration) as a representation comprising a swatch of greencolour together with the following explanation:3- The mark consists of the colour green (Pantone 376c), as shown in therepresentation attached to the application, applied as the predominant colourto the goods, their packaging or labels. Section 18(2) of the Trade Marks Act2002 applies.1 In class 32 of the Nice Classification system for "[e]nergy drinks; none of the aforementionedbeing cocoa-based beverages".2 With a deemed date of registration of 29 August 2008.3 Pantone 376C is a reference to the Pantone Matching System of colour coding created byPantone LLC.[2] However the scan by the Intellectual Property Office of New Zealand (IPONZ)of the green metal specimen affixed to the paper application generated a differentshade of green from Pantone 376C. The different shades are as follows:[3] The appellant, Energy Beverages LLC (EBL), applied:(a) on 20 June 2017 for revocation of the Registration on the ground ofnon-use of the colour green appearing in the representation on theregister; and(b) on 8 August 2017 for a declaration that the Registration was invalid onthe ground that it comprised a sign that did not qualify as a trade mark.Both applications sought removal of Frucor's trade mark from the register oftrade marks.[4] Those applications were declined by the Assistant Commissioner ofTrade Marks.4 EBL's appeal in the High Court was dismissed.5 EBL now appeals onboth its non-use and invalidity contentions. Frucor supports the judgment both in itsterms and on other grounds.4 Energy Beverages LLC v Frucor Suntory New Zealand Ltd [2020] NZIPOTM 5 [Revocationdecision]; and Energy Beverages LLC v Frucor Suntory New Zealand Ltd [2020] NZIPOTM 6[Invalidity decision].5 Energy Beverages LLC v Frucor Suntory New Zealand Ltd [2020] NZHC 3296, (2020)157 IPR 176 [High Court judgment].Obtaining and removing registered trade marksRegistration[5] The definition of "trade mark" in s 5(1) of the Trade Marks Act 2002 (the Act)states:trade mark—(a) means any sign capable of—(i) being represented graphically; and(ii) distinguishing the goods or services of one person from thoseof another person; [6] A "sign" is defined in s 5(1) as including:(a) a brand, colour, device, heading, label, letter, name, numeral, shape,signature, smell, sound, taste, ticket, or word; and(b) any combination of signs.[7] An application for registration must contain a clear representation of thetrade mark.6 Regulation 44(g) of the Trade Marks Regulations 2003 (the 2003Regulations) provides that if the trade mark is a colour or colours an applicant mustsupply a description acceptable to the Commissioner of Trade Marks of the colour orcolours before their application can be accepted.[8] Part 2 of the Act contains several provisions which preclude the Commissionerfrom registering trade marks. Of significance for this case are ss 17 and 18. Section 17materially states:17 Absolute grounds for not registering trade mark: general(1) The Commissioner must not register as a trade mark or part of atrade mark any matter—(a) the use of which would be likely to deceive or causeconfusion; or6 Trade Marks Regulations 2003, reg 42(1)(b).(b) the use of which is contrary to New Zealand law or wouldotherwise be disentitled to protection in any court; or(c) the use or registration of which would, in the opinion ofthe Commissioner, be likely to offend a significant section ofthe community, including Māori.(2) The Commissioner must not register a trade mark if the application ismade in bad faith.Section 18 provides:18 Non-distinctive trade mark not registrable(1) The Commissioner must not register—(a) a sign that is not a trade mark:(b) a trade mark that has no distinctive character:(c) a trade mark that consists only of signs or indications that mayserve, in trade, to designate the kind, quality, quantity,intended purpose, value, geographical origin, time ofproduction of goods or of rendering of services, or othercharacteristics of goods or services:(d) a trade mark that consists only of signs or indications thathave become customary in the current language or in thebona fide and established practices of trade.(2) The Commissioner must not refuse to register a trade mark undersubsection (1)(b), (c), or (d) if, before the date of application forregistration, as a result of either the use made of it or of any othercircumstances, the trade mark has acquired a distinctive character.[9] On registration of a trade mark the Commissioner must enter on the registerthe actual date of registration and the deemed date of registration7 and, in the case ofan application for the registration of a series of trade marks, must register thetrade marks as a series in one registration.8 The register9 is prima facie evidence of7 Trade Marks Act 2002, s 51(a).8 Section 51(c).9 Which, according to s 181(2), may be kept in any manner that the Commissioner thinks fit,including, either wholly or partly, by means of a device or facility—(a) that records or stores information electronically or by other means; and(b) that permits the information so recorded or stored to be readily inspected or reproduced inusable form.any matters required or authorised by or under the Act to be entered in it.10The contents of the register are prescribed by s 182 of the Act.Invalidity[10] The power to remove an invalidly registered trade mark is provided in s 73 ofthe Act:73 Invalidity of registration of trade mark(1) The Commissioner or the court may, on the application of anaggrieved person (which includes a person who is culturallyaggrieved), declare that the registration of a trade mark is invalid tothe extent that the trade mark was not registrable under Part 2 at thedeemed date of its registration.(2) Despite subsection (1), the registration of a trade mark that hasacquired a distinctive character after its registration must not bedeclared invalid even though the trade mark was not registrable undersection 18(1)(b), (c), or (d) at the deemed date of its registration.[11] However, after seven years from the date of application for registration certaintrade marks are presumptively valid. Section 75 states:75 Presumption of validity of registration of trade markThe registration of a trade mark is, after the expiration of 7 years fromthe deemed date of registration, deemed to be valid unless—(a) the registration was obtained by fraud; or(b) the trade mark should not have been registered on any of thegrounds set out in section 17(1) or (2); or(c) the registration may be revoked on any of the grounds set outin section 66.Revocation[12] Validly registered trade marks may be revoked on various grounds prescribedin s 66 of the Act. One such ground is that at no time during a continuous period ofthree years or more was the trade mark put to genuine use in the course of trade in10 Section 181(3).New Zealand, by the owner for the time being, in relation to goods or services inrespect of which it is registered.11Factual background[13] A paper application to register a shade of green as a trade mark was receivedby IPONZ from Frucor on 29 August 2008 by post. The application comprised apaper form with a green coloured metal specimen (the colour swatch) stapled tothat form. It was date-stamped 29 August 2008 by IPONZ and allocated thetrade mark application number 795206.[14] What next occurred is conveniently recorded in a written statement ofthe Commissioner:125. At the time application no. 795206 was lodged, IPONZ wastransitioning to a paper-less system. Part of the transition involveddigitalising physical applications received. In accordance withdigitalisation process, the paper application (TM applicationno. 795206) was scanned along with the attached metal specimen ofthe mark on 2 September 2008.6. The application was examined on the basis of the application as itappeared digitally on the IPONZ online system after scanning and inconjunction with the other material provided, including the Pantonereference for the colour in the metal swatch.7. [Frucor] submitted evidence in support of registration on 5 August2009, 8 July 2010 and 18 March 2011 in physical form. The evidenceincluded a physical sample of [Frucor's] aluminium can packagingfeaturing the colour to be registered as a trade mark along withprint outs of photographs and other printed promotional materials.The examiner was satisfied that the evidence of acquireddistinctiveness demonstrated use of Pantone 376c or a colour closelyapproximating it.[15] The application as filed did not contain a description of the colour.On 4 May 2011 a written description was lodged. The final written description, whichwas settled upon on 24 November 2011, read:11 Section 66(1)(a).12 This statement dated 18 February 2021 (subsequent to the delivery of the High Court judgment)was filed in the High Court in connection with an application by Frucor for rectification of theregister, which is yet to be heard.The mark consists of the colour Green (Pantone 376c) as shown in therepresentation attached to the application, applied as the predominant colourto the goods, their packaging or labels.[16] The genesis of this litigation is as follows. Frucor and EBL both marketedtheir energy drink products in containers which were partially coloured Pantone376C green. Frucor maintained that EBL's use of Pantone 376C on its productsinfringed TM 795206 and indicated it would bring court proceedings for infringement.[17] In 2017 EBL filed its applications for revocation of the Registration anda declaration of invalidity. The former application was made in reliance on s 66(1)(a)of the Act and contended that Frucor had not applied the representation of green shownon the register as the predominant colour to its goods, packaging or labels for acontinuous period of three years or more.[18] The grounds for the invalidity application made under s 73 included thatthe representation was for a sign that did not qualify as a trade mark for the followingreasons:The use of the word 'predominant' opens the door to a multitude of differentvisual forms as a result of its implied reference to other colours and othervisual material not displayed or described in the Registrationcondition/explanation and over which the Pantone 376C may predominate.It is a Registration of a shade of colour 'plus' other undefined material, not ofjust an unchanging application of a single colour.Consequently, the Registration is for not one sign but multiple signs withdifferent permutations, presentations and appearances, which are neithergraphically represented nor described with any certainty or precision.The Assistant Commissioner's decisions[19] The Assistant Commissioner released separate decisions on the use andvalidity challenges on the same day.The use challenge[20] The Assistant Commissioner accepted Frucor's submission that the writtenexplanation of the mark defines the trade mark, not the image of the mark onthe register.13 She viewed the relevant representation as being that attached to thetrade mark application as specified in the written explanation. She did not considerthat the different representation of the colour on the register was relevant to theassessment of use under s 66 of the Act.14 On the basis of the evidence of the colourof the labels, cans and shrink wraparounds for Frucor's product "V", theAssistant Commissioner concluded that EBL failed to establish that Frucor had not putthe trade mark to genuine use in New Zealand for a continuous period of three yearsor more following the actual date of registration.15[21] In discussing EBL's argument the Assistant Commissioner observed:63. [EBL] would require an intermediate step, which is to examine thedescription of the mark to decide whether the two elements of thedescription together constitute a representation of the mark that canever be used as a trade mark. I tend to agree with the owner that thisadditional step would require me to go behind the registration:essentially, the present challenge might be regarded as a challenge towhether the mark was capable of registration as a trade mark unders 5 of the Act in the first place, rather than being about use of the markat all.The validity challenge[22] In accepting Frucor's contention that EBL's application, filed almost nine yearsafter the deemed date of registration, was time-barred, the Assistant Commissionerobserved that the legislature had made a deliberate decision to extend a degree ofindefeasibility to a trade mark after seven years of continued registration except in thecircumstances specified in s 75, relevantly that the trade mark should not have beenregistered on any of the grounds set out in s 17(1) and (2).16 Noting that registrationin breach of s 18 (for non-distinctiveness) is not a ground that overcomes thepresumption of validity under s 75, the Assistant Commissioner stated:44. In summary, I accept [Frucor's] characterisation of the first ground asan attempt to dress up [EBL's] objection to the Trade Mark as anobjection under s 17, when in fact the applicant is seeking to challengethe registration for non-distinctiveness under s 18. That is not apermitted ground of challenge after seven years of registration unders 75.13 Revocation decision, above n 4, at [51].14 At [55].15 At [87].16 Invalidity decision, above n 4, at [40].[23] The Assistant Commissioner went on to consider the substance of EBL'sargument, advanced in reliance on Société des Produits Nestlé SA v Cadbury UK Ltd(Cadbury UK), that TM 795206 lacked the required certainty and specificity to beclassified as a trade mark at all.17 She was satisfied that the written description of themark, including the reference to the predominant application of the relevant colour,was sufficiently clear in meaning to be capable of graphical representation andtherefore registration.18[24] She reasoned:54. In this regard, the starting point must be a consideration of whata reasonable person would understand by the wording of the writtendescription of the mark in question. I think it is clear that the referenceto a 'predominant' colour in the context of a trade mark will begenerally understood to mean the colour that catches the attention ofconsumers as being the main or most memorable colour used on thegoods or in respect of the services covered by the registration.55. I do not think that asking whether a colour is predominant if itconstitutes say 50% of the colour on packaging, for example,is helpful. In some cases (for example, if the packaging features asignificant proportion of another colour such as white or grey) thecolour may still be predominant, in the sense of being the mosteye-catching or obvious. Ultimately, whether a colour is predominantin any given context will depend on the particular circumstances.The fact that this might be a difficult judgement to arrive at in somecases does not automatically mean that the formula "application as thepredominant colour" will render a mark insufficiently clear to becapable of graphical representation under s 5.The High Court judgmentThe validity challenge[25] Dobson J first addressed the validity challenge. In renewing its validitychallenge on the ground that the registration was of a sign not capable of graphicrepresentation, EBL sought leave to rely on s 18(1)(a) rather than s 17(1)(b).EBL argued that the separate references in both ss 18(2) and 73(2) of the Act tos 18(1)(b), (c) and (d) reflected Parliament's intention to treat the circumstances inwhich the Commissioner must not register a sign that is not a trade mark, pursuant to17 Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174, [2014] RPC 7.18 Invalidity decision, above n 4, at [56].s 18(1)(a), differently from the other circumstances where registration cannot occur.In opposing leave Frucor responded that the legislature should be taken to haveintended consistency of approach between ss 73 and 75. Both should be interpretedas treating the status of registration as, first, what can be challenged under s 73, butsecond, what is protected by s 75 after a period of seven years.[26] Dobson J was not persuaded that a challenge advanced under s 18(1)(a)of the Act could be brought after the expiration of seven years from the deemed dateof registration of the trade mark.19 He considered that the presumption of validity ins 75 prevented the argument being raised, stating:[33] [The] submission [of counsel for EBL] that there is policyjustification for purging the register of marks that ought not to be there has toyield to the policy aim of affording owners of trade marks a measure ofcertainty in respect of their rights after a period of seven years. I accept[counsel for Frucor's] points about the interpretation of the scope of s 75.It follows that I find there is no basis on which to grant leave for EBL toadvance a challenge to the validity of the trade mark under s 18(1)(a) ofthe Act.(Footnote omitted.)[27] Like the Assistant Commissioner, the Judge proceeded to consider thesubstance of the validity challenge. EBL had attacked the Assistant Commissioner'sconclusion at [55]20 as being erroneous and out of step with what was said to be thecorrect approach taken in the United Kingdom, Europe and Australia. Invoking thereasoning of overseas authorities,21 EBL contended that the mark could not berepresented graphically because its description encompassed numerous alternativerepresentations. Permitting a description referring to a predominant use ofPantone 376C would render it impossible to draw the distinction between the identicaland deceptively similar forms of potential infringement (the umbra and penumbra ofthe trade mark) when considering a competitor's use of what is arguably thesame colour.19 High Court judgment, above n 5, at [33].20 See [24] above.21 Société des Produits Nestlé SA v Cadbury UK Ltd, above n 17; Glaxo Wellcome UK Ltd v SandozLtd (No 2) [2017] EWCA Civ 335, [2017] FSR 33; and Frucor Beverages Ltd v Coca-ColaCompany [2018] FCA 993, (2018) 358 ALR 336.[28] Finding for Frucor on this issue, the Judge did not accept that the strictrequirements for the definition of a mark in the European jurisprudence were eithernecessary or appropriate in the context of the Act.22 He explained that the analysis inCadbury UK reflected an expectation that the terms of the written explanation of themark must necessarily be distinctive of its whole appearance. However that approachdid not contemplate acceptance of a mark that is described in less than entirelyexhaustive detail, in part at least because that would enable non-material details to bepresent in more than one form.23[29] Nor did the Judge accept that permitting a formula of words includingreference to the predominant use would necessarily lead to an applicant acquiringrights over a multitude of signs. He explained:[70] Rather, the mark prevents use by others of the get up for therelevant class of goods that uses the specific nominated shade of greenpredominantly. Use of that formula of words is likely to reduce the scope ofthe umbra, and require proof of deceptive similarity in the penumbra, but thatdoes not prevent use of this formula of words for a colour trade mark.Consequently, even if jurisdiction existed for a challenge to the trade mark unders 18(1)(a) the Judge agreed with the Assistant Commissioner's view that the groundcould not be made out.24The use challenge[30] EBL submitted that the trade mark was ambiguous because it includedreference to a colour that was not the shade described in the reference toPantone 376C. Reliance was placed on Frucor Beverages Ltd v Coca-Cola Company,where Yates J ruled that persons inspecting the register were entitled to assume thecolour shown on the Register conformed to the description of that colour by referenceto a colour system such as Pantone.25 Those searching the register would not haveaccess to the application, which included the correct shade of green, so the referencein the explanation for the mark to the colour as shown in the representation "attachedto the application" was of no use. In response to Frucor's point that the state of the22 High Court judgment, above n 5, at [66].23 At [67].24 At [75].25 Frucor Beverages Ltd v Coca-Cola Company, above n 21, at [121]–[122].register was not the result of any fault on its part, EBL submitted that Frucor could notbe treated as entirely faultless because it had been on notice for many years that theuploaded colour swatch was not Pantone 376C and had done nothing to correct theconfusion that inconsistency was liable to cause.[31] Adopting the approach in Levi Strauss & Co v Kimbyr Investments Ltd,26the Judge held that the wording in the description ought to dictate the interpretation ofwhat is subject to trade mark protection. Noting the requirements of the IPONZpractice guidelines for precision in written descriptions of colour marks, the Judgeconsidered it suggested primacy was given to the code of colour and the writtendescription of that colour nominated in the application. While recognising that casualreaders of the explanation for the mark might well be misled by the incorrect swatchreproduced, the Judge considered those competitors wishing to be certain of theparticular shade of green, use of which was precluded by the trade mark, might equallybe expected to check the Pantone coding.27[32] Consequently the Judge agreed with the Assistant Commissioner's conclusionthat non-use of the mark was not established, given the acknowledged consistent useby Frucor throughout the relevant period of Pantone 376C as a predominant colour.28[33] Recognising that the problem in this case was unlikely to be an isolatedoccurrence, the Judge offered a suggestion:[94] It appears likely on the details of other colour marks referred to in[counsel for Frucor's] submissions that the transposition of other shades ofcolours that are distinguishable from the Pantone colours cited in the relatedapplication is something of a systemic problem. The preferable solution tosuch a problem is to correct the register in those cases rather than have errorsby IPONZ deprive the registered owners of their property rights in the trademarks that registration entitles them to assume subsists.[95] It is similarly illogical to hold Frucor as having protection only for adarker shade of green than it has ever intended to use, and in respect of whichit has never attempted to make out sufficient use to establish the distinctivecharacter justifying registration. The answer is to correct the register and,depending on the circumstances, for any allegations of infringement duringthe period in which the register has misled third parties to have regard to thepotentially misleading state of the register.26 Levi Strauss & Co v Kimbyr Investments Ltd [1994] 1 NZLR 332 (HC).27 High Court judgment, above n 5, at [91]–[92].28 At [96].The issues on appeal[34] The parties were unable to agree on the formulation of the issues. With thebenefit of oral argument we consider the following issues arise for determination:(a) Did the Judge err in holding that the time bar in s 75 prevents achallenge to the Registration under s 18(1)(a)?(b) If the answer to (a) above is in the affirmative, did the Judge err indeclining EBL leave to bring a challenge under s 18(1)(a)?(c) Is the representation a sign capable of being represented graphicallyand hence a trade mark? In particular:(a) Does the use of the phrase "predominant colour" causethe Registration to be unclear and to include more than one sign?(b) Does the difference between the darker shade of green shown onthe representation on the register and the written descriptionPantone 376C mean the Registration is ambiguous andtoo imprecise?(d) Did the Judge err in holding that the Registration should be interpretedas being defined by the written description of the colour on the register,namely Pantone 376C?Issue 1: Did the Judge err in holding that the time bar in s 75 prevents a challengeto the Registration under s 18(1)(a)?[35] EBL contends that it would be an absurd result if a sign, which failed to qualifyas a trade mark in terms of s 18(1)(a) (and hence should never have been registered asa trade mark), should be immune from challenge when (as here) seven years haveelapsed from the deemed date of registration. Frucor responds that, as s 18 is notincluded in the list of exceptions in s 75, TM 795206 is now deemed to be valid.The contest is essentially one of statutory interpretation. We have concluded, notwithout some hesitation, that Frucor's argument is correct. These are our reasons.[36] It is convenient to start by reference to the Trade Marks Act 1953 (the 1953Act) and the predecessor to s 75. Prior to the 2002 Act the register comprised twoparts. For registration in Part A, a high degree of distinctiveness in the mark wasrequired.29 The essential characteristic of being "adapted" to distinguish the owner'sgoods from those of others was to be contrasted with the requirement for a Part Bregistration that the mark was "capable" of so distinguishing the owner's goods.30This Court held in McCain Foods (Aust) Pty Ltd v Conagra Inc that the capacity todistinguish had to be shown at the date of application.31 It needed to be inherent inthe mark or proved to exist in fact by reference to use of the mark or by othercircumstances.32[37] The predecessor to s 75 was s 22(1) of the 1953 Act, which deemed only thosetrade marks registered in Part A of the register to be valid after seven years, unless theregistration was obtained by fraud or the trade mark offended against s 16.33Speaking with reference to the equivalent provision in the Trade Marks Act 1938(UK), Brightman LJ in Imperial Group Ltd v Philip Morris & Co Ltd observed that inrespect of Part A registrations there was an irrebuttable presumption that the originalregistration was valid save in the excepted cases.34 In respect of a trade markregistered in Part B of the register under the 1953 Act, there was no temporal limitationon launching a validity challenge or raising an invalidity defence.[38] The division of the register into two parts in ss 14 and 15 of the 1953 Act wasabandoned in the 2002 Act. The requirement for distinctiveness is now addressed ins 18, which is a substantial reproduction of s 3(1) of the Trade Marks Act 1994 (UK).[39] Fundamental to the argument of Mr Arthur KC for EBL is the distinctionbetween signs which are trade marks — that is, signs capable of (i) being representedgraphically and (ii) distinguishing the goods or services of one person from those ofanother person — and signs which lack such capability. He submits that s 75 deemsvalid "the registration of a trade mark". If what has been registered is not a29 Trade Marks Act 1953, s 14(1).30 Section 15(1).31 McCain Foods (Aust) Pty Ltd v Conagra Inc [2002] 3 NZLR 40 (CA).32 At [41].33 Section 16 was essentially similar to the current s 17(1) of the Trade Marks Act 2002.34 Imperial Group Ltd v Philip Morris & Co Ltd [1982] FSR 72 (CA) at 88."trade mark" it follows that there is nothing to deem valid. Hence he contends thatthe time bar does not preclude an application for a declaration of invalidity if advancedon the basis that the registration is for a sign which lacked the capability to be atrade mark.[40] Mr Brown KC for Frucor responds that both ss 73 and 75 use the phrase"the registration of a trade mark" as the qualifier which, given the desirability ofinternal consistency, should have the same meaning in both provisions. The sectionswere drafted to operate together and should not be considered in isolation. The formerprovides a mechanism to challenge the validity of a trade mark registration whilethe latter prevents that mechanism from being used after seven years (except in threelisted circumstances). Non-compliance with s 18 is not an excepted ground unders 75. This omission was deliberate and should not be undermined.[41] Focussing on the reference to "registration" of a trade mark in both provisions,Mr Brown further contends that it is the Commissioner's "action" of registeringthe mark by placing it on the register which is deemed to be valid. Were it otherwisehe suggests that s 75 could have simply stated that "a registered trade mark is deemedto be valid unless ". He argues that by using the words "registration is deemedto be valid", Parliament sought to increase commercial certainty by guaranteeing thatregistrations that may not have been valid are nonetheless deemed to be so afterthe effluxion of the specified period.[42] There is a certain logic to Mr Arthur's argument grounded in the philosophy ofthe concept of a trade mark. Section 18(1) distinguishes between a sign that is not atrade mark (s 18(1)(a)) and signs which, although not registrable, are trade marks(s 18(1)(b)–(d)). That distinction is recognised in both s 18(2) and s 73(2). The formerprovides that the Commissioner must not refuse to register a trade mark unders 18(1)(b)–(d) if, before the date of application for registration, as a result of either theuse made of it or of any other circumstances, the trade mark has acquired a distinctivecharacter. Similarly, s 73(2) provides that the registration of a trade mark that hasacquired a distinctive character after its registration must not be declared invalid eventhough it was not registrable under s 18(1)(b)–(d) at the deemed date of its registration.No such saving applies to the prohibition in s 18(1)(a) against the registration of signsthat are not trade marks.[43] Those provisions recognise that trade marks identified as not registrable could,by the acquisition of a distinctive character, secure validity while signs the subject ofs 18(1)(a) could not. Hence Mr Arthur submitted that EBL's interpretation of s 75 wasconsistent with the distinction in the Act between invalidity under s 18(1)(a), which,in his words, could "never be cured", and invalidity under the other provisions ofs 18(1) which could be cured via either s 18(2) or s 73(2).[44] Given the recognition in the legislation of that clear and principled distinction,it may be thought surprising that, even after a period of seven years from the deemeddate of registration, the registration of a sign which is not capable of even serving asa trade mark should be forever immune from challenge. To express it in simple termsby reference to the second limb of the definition of sign,35 why should an erroneousregistration of say "car" for motor vehicles or "kai" for food products remainthe perpetual monopoly of one trader?[45] However our task is not to determine what the legislative drafter might ideallyhave stated but rather to determine the meaning of what the drafter in fact said.36That meaning is to be ascertained from the text of the enactment and in light of itspurpose and its context.37[46] The practical difficulty which Mr Arthur's submission must confront is this.If the reference to trade mark in the expression "the registration of a trade mark" ins 75 is not to include an erroneously registered s 18(1)(a) sign then, assuming thephrase in s 73 is similarly construed, where is the statutory source of jurisdiction todeclare such a registration invalid? Mr Brown contends that there would be nojurisdiction to do so because s 73(1) would not extend to erroneously registered signs.35 Trade Marks Act 2002, s 5(1).36 See Stock v Frank Jones (Tipton) Ltd [1978] 1 WLR 231 (HL) at 236 per Lord Simon.37 Legislation Act 2019, s 10(1); and Commerce Commission v Fonterra Co-operative Group Ltd[2007] NZSC 36, [2007] 3 NZLR 767 at [22].[47] Mr Arthur endeavours to overcome that difficulty by according s 73(and s 18(1)(a)) a purposive interpretation. He submits:37. Section 73 is the general provision allowing for a declaration ofinvalidity of a trade mark registration "to the extent that the trademark was not registrable under Part 2 at the deemed date ofregistration" (emphasis added). So if what has been registered is nota trade mark, it was not registrable in the first place and can bedeclared invalid.38. This is consistent with s73(2), which "saves" trade marks that werenot registrable under s18(1)(b), (c), or (d) at the deemed date ofregistration, if they have acquired a distinctive character. Again, nosuch saving applies where the registration is invalid on the basis ofs18(1)(a).39. It follows that a purposive interpretation of ss18(1)(a) and 73necessarily permits a declaration of invalidity where what has beenregistered is not a 'trade mark'.By contrast he maintains that it is unnecessary to resort to a purposive interpretationfor s 75 as there is no need for an expansion of the express and literal words chosen.[48] We agree with Mr Brown that adopting an interpretation, which involvesreading the same significant phrase differently in the two provisions, is strained.In short, we do not consider that Parliament can have intended that s 73 should extendto address the erroneous registration of s 18(1)(a) signs while s 75 does not. The resultwould be an internal inconsistency in a small group of provisions which togetheraddress the concept of invalid registrations. If that was Parliament's intention weconsider that a much more obvious course would have been to include s 18(1)(a) inthe list of exceptions in s 75.[49] While our interpretation has been reached without reliance on the legislativehistory, it is apparent that the extension of the presumption of validity to all registeredtrade marks was not accidental. As Mr Brown observed, a report of the Ministry ofEconomic Development provided to the Commerce Select Committee38 addressed asubmission questioning the utility of such a provision, stating:This clause exists because of the abolition of Parts A and B of the Trade MarksRegister. It extends the current protection afforded to a trade mark registered38 It contained a detailed analysis of substantive issues raised on submissions on the Bill togetherwith the Ministry's comments and recommendations.under Part A to all registered trade marks. It provides that a trade mark cannotbe challenged if it has been on the register for a period of seven years, subjectto certain exceptions. The advantage of this is that automatic validity helpscreate certainty in the law of registration. It also reduces expense fortrade mark owners when defending their trade marks in Court.[50] The New Zealand Institute of Patent Attorneys voiced a concern thattrade marks not subject to the list of exceptions would be deemed valid afterseven years. It drew attention to fact that, because s 18 was not included in theexceptions, a trade mark that had not acquired a distinctive character would be deemedvalid after seven years. With refence to that submission the departmental report stated:Disagree. If the trade mark has been registered for such a significant periodof time without challenge, it should be allowed to remain on the registersubject to the stated exceptions.[51] The Institute also questioned whether s 75 should remain in light of theprovisions of s 73(2). The Ministry's report made reference to an earlier report to theCommerce Committee concerning the drafting of s 73(2), containing arecommendation (which was adopted) that the original reference to "Part 2" should bereplaced by the reference to s 18(1)(b),(c) and (d).[52] Collectively this legislative history assists in providing the cross-checkingwhich Commerce Commission v Fonterra Co-operative Group Ltd requires and tendsto indicate that the purpose of s 75 aligns with how we have construed its meaning.39[53] Finally we note that EBL placed reliance on the fact that neitherthe Trade Marks Act 1994 (UK) nor the Trade Marks Act 1998 (Singapore) containsan equivalent to s 75 and hence in those jurisdictions such erroneous registrationswould not be immune from challenge. However, as Mr Brown observed, the UK Actwas drafted so that the United Kingdom could comply with the European Trade MarkDirective (the Directive) which, as a matter of EU policy, provided for invaliditygrounds to always be available.40 There is weight in Mr Brown's submission that thedeliberate retention by Parliament in 2002 of the presumption in s 75 some eight yearssubsequent to the 1994 UK Act lends support to Frucor's argument.39 Commerce Commission v Fonterra Co-operative Group Ltd, above n 37, at [22].40 Directive 89/104 of 21 December 1988 to approximate the laws of the Member States relating totrade marks [1989] OJ L40/1.[54] Consequently we agree with the Judge and the Assistant Commissioner that asEBL's application was filed more than seven years after the deemed date of registrationit was time-barred. However, if we had reached a different view we would have beenprepared to hear argument on the validity issue because, although EBL's applicationstated that it was brought under s 17(1)(b), the application was sufficiently clear as tothe basis of the argument that the sign did not qualify as a trade mark. Adequateparticulars having been provided of the basis of its contention,41 we would not havedeclined to entertain the argument on the ground that the wrong statutory provisionwas invoked.Issue 2: Does the use of the phrase "predominant colour" cause the Registrationto be unclear and for more than one sign?[55] If our conclusion on Issue 1 is correct, there is no need to consider Issue 2.However in case this matter goes further we proceed to do so. It is appropriate toconsider Issue 2 for the further reason that there should be clarity for the futureconcerning the registrability of colours as trade marks. Frucor's submissions notedthat there were 123 "live" colour trade mark registrations on the register, 21 of whichused the same or substantially similar wording to the explanation in TM 795206.In addition there were 26 others which used another evaluative concept to describe theextent of the use of the colour on goods or in relation to goods.42 While as aconsequence of our conclusion on Issue 1 the validity of such registrations may not beopen to challenge, a decision on Issue 2 may be of relevance for future similarapplications.The contest[56] The thrust of EBL's contention is captured in Mr Arthur's submission that:The "explanation" in the Registration uses the imprecise term "predominantcolour". As a result, the Registration is not just for a single colour withunchanging application, but for a multitude of different applications unlimitedin number and scope of application. As such, the Registration lacks the clarityand precision required to be capable of being represented graphically and isan invalid registration for more than one sign.41 See [18] above.42 For example "substantially"; "as applied to the majority of the outer surfaces of the goods";"uniformly distributed"; and "used in combination".(Footnote omitted.)[57] EBL's attack is two pronged: first, that the adjective "predominant" isinherently imprecise; secondly, that even if the word has a clear meaning, its userenders the Registration insufficiently precise because it covers a range of signs.[58] Frucor's rejoinder is that the words "applied as the predominant colour to thegoods, their packaging or labels" were simply a practical recognition bythe Commissioner that packaging and labelling, particularly of a beverage, is requiredby law to have other labelling information. Frucor contended that without the word"predominant", the mark "would have been too broad, preventing any use of that shadeon the goods made by another trader".[59] Nevertheless, it is apparent that Frucor intends that the trade mark registrationshould provide it with flexibility as to the way in which it deploys the colour on itsproducts and packaging. As it submitted:An applicant should not be required to file a new colour mark applicationevery time product packaging is modified so that the colour in question takesup more or less of the packaging (whilst remaining the colour 'predominantlyapplied to the packaging').[60] If one assumes that in order to fulfil its function as an indication of origina trade mark must be perceived uniformly, the underlying issue as we see it is whethera trade mark can be registered for a sign which is so defined as to permit manypermutations of form. We will consider that issue in four stages:(i) the law and practice governing trade mark applications;(ii) the chronology of the application for TM 795206;(iii) the meaning of "predominant"; and(iv) whether a registration may cover multiple signs.The law and practice governing trade mark applications(a) A representation of the trade mark[61] Under the 1953 Act applications for trade mark registration were to be madein a prescribed form which contained or had attached to it a representation ofthe mark.43 Speaking of the equivalent United Kingdom provision, Lord Diplockstated:44The Trade Marks Rules 1938 do not in terms require the application forregistration of a trade mark to contain a verbal description of the mark, butrule 23 does require the application to contain a "representation" of the mark.In the ordinary way the representation would be a drawing or other pictorialrepresentation of the mark, but rule 28 authorises the registrar to accept insteada specimen or copy of the trade mark in such form as he thinks mostconvenient, and to deposit in the office a specimen or copy of any trade markwhich cannot conveniently be shown by a representation.45[62] The Trade Marks Amendment Act 1994 substituted a new definition oftrade mark, which introduced the requirement that a trade mark comprise a sign"capable of being represented graphically".46 No form of application is prescribedunder the 2002 Act, but reg 42(1)(b) of the 2003 Regulations requires that anapplication must contain "a clear representation" of the trade mark. With reference tothat requirement the IPONZ practice guidelines state:4.3 Clear representationAn application to register a trade mark must contain a clear graphicrepresentation of the mark in order to obtain a filing date.47The graphic representation of the mark must be suitable for examinationpurposes, the determination of infringement actions, and public inspection ofthe register. In the [Ty Nant Spring Water] case, the Appointed Person statedthat:4843 Section 26(1); and reg 20 and Form 5 of the Trade Marks Regulations 1954. If dissatisfied withany representation of a mark the Commissioner was empowered by reg 21 to require that anotherrepresentation satisfactory to him or her be substituted before proceeding with the application.44 Smith Kline & French Laboratories Ltd v Sterling-Winthrop Group Ltd [1975] 1 WLR 914 (HL)at 918.45 Regulation 22(2) of the Trade Marks Regulations 1954 was the equivalent of r 28 of theTrade Marks Rules 1938 (UK).46 The definition also referred to the sign being capable of distinguishing the goods or services ofone person from those of another person.47 Regulations 42(b) and 42(c) of the Regulations.48 Ty Nant Spring Water Ltd's Trade Mark Application [2000] RPC 55 at 56. [An appointed personis a person appointed under s 77 of the Trade Marks Act 1994 (UK) to hear and decide appealsunder that Act.]These provisions call for a fixed point of reference: a graphicrepresentation in which the identity of the relevant sign is clearlyand unambiguously recorded.A representation that attempts to define a sign too broadly may be at riskof the mark being considered ambiguous and may therefore not qualifyfor a filing date.49The representation should not assume that the reader has prior knowledgeof the actual sign used by the applicant. Instead, "the description muststand on its own to identify the trade mark".50[63] It seems that the reference to a "graphic representation" derives fromthe reference in the definition of a trade mark as meaning a sign "capable of beingrepresented graphically". We agree with the view of Simon Thorley QC(the Appointed Person) in Swizzels Matlow Ltd's Application for a Three DimensionalTrade Mark that this phrase does not import a requirement for some form ofvisual image. As he explained:51In the case of sounds, the relevant sound could be represented by musicalnotation. In such a case, the notation is an accurate description of the notes inquestion when considered by a person conversant with the practice of musicalnotation. This is no different, to my mind, from the use of an ordinary Englishword as a trade mark when the combination of letters conveys a description toan English speaking person. Likewise colours can accurately be describedby reference to conventional colour charts. It cannot therefore be that thewords "represented graphically" of themselves require the representation ofthe mark to be some form of visual image of it. Further, I do not think it ishelpful in this context to try and determine the meaning of the word"graphically" by reference to English dictionaries. The word has its origin inthe Directive and more assistance can be obtained from considering thepurpose for which the provision is there.[64] Mr Thorley went on to draw attention to the fact that in both the Trade MarksAct 1994 (UK) and the Directive (and likewise in s 89 of the 2002 Act), a distinctionis drawn between the powers of the registered proprietor to restrain infringementwhere an alleged infringer uses a sign which is identical to the registered trade mark,as opposed to one that is merely similar to it. He said:5249 See Orange Personal Communications Services Ltd's Application [1998] ETMR 460, whichconcerned an application to register a mark that was described as consisting of the colour "orange".No representation of the colour was provided, and the colour was not defined by reference to aparticular colour standard.50 See the comments of Mr Simon Thorley QC, as the Appointed Person, in Swizzels Matlow Ltd'sApplication for a Three Dimensional Trade Mark [1999] RPC 879.51 Swizzels Matlow Ltd's Application, above n 50, at 884–885.52 At 885.It is thus essential for traders to be able to identify with clarity what theregistered trade mark is. The first question that arises when infringement is inissue is whether or not the alleged infringing mark is identical to the trademark registered. If it is, and is used in relation to the same goods, the trademark proprietor has an absolute monopoly. Where, however, the mark is notidentical but merely similar, the monopoly is restricted to uses which createthe necessary likelihood of confusion on the part of the public.This is a fundamental aspect of the law and it is for this reason that thegraphical representation, being the means by which the trade mark is defined,must be adequate to enable the public to determine precisely what the sign isthat is the subject of the registration.[65] We endorse that view. Clarity and precision are important for all statutoryintellectual property rights, but particularly so in the case of registered trade marksgiven the significance of the distinction between identical and similar signs.The implications of the distinction were recently recognised by the Supreme Court inCrocodile International Pte Ltd v Lacoste when explaining the terms umbra andpenumbra:53[46] We interpolate that the term umbra is used to denote the protectiongiven to trade marks by stopping anyone else from using, or seeking toregister, the exact trade mark registered. This is the strongest protectionavailable. The term penumbra is used to denote the protection given to trademarks by stopping anyone else from using, or seeking to register, a similartrade mark to the trade mark registered. This protection is not as strong as theumbra.(b) Colour marks[66] The 1994 Amendment Act introduced "colour" to the definition of "sign".Although there was no amendment at that time to the Trade Marks Regulations 1954(the 1954 Regulations), it seems that the Commissioner proceeded to adopt theUnited Kingdom practice of requiring applicants for colour trade marks to specify theexact colour using a recognised colour standard such as Pantone. That practice wasformalised in the 2003 Regulations, with reg 44 specifying that the information thatan applicant must supply before an application can be accepted includes:(g) if the trade mark is a colour or colours, a description acceptable tothe Commissioner of the colour or colours; and53 Crocodile International Pte Ltd v Lacoste [2017] NZSC 14, [2017] 1 NZLR 679 (footnoteomitted).(h) if the trade mark is limited as to colour, a description acceptable tothe Commissioner of the colour or colours in the trade mark; [67] In relation to colour marks the IPONZ practice guidelines state:4.3.1 Colour marksWhere an applicant seeks to register a colour or colours as a trade mark, theapplicant will be required to file with the application either:54• a representation of the colour(s), or• a description of the colour(s) using a widely known and readily availablecolour standard (such as the colour indexing scheme of the Pantone ®colour system).The description of the trade mark should also include information on how thecolour(s) are being used, or are to be used, in relation to their goods orservices, such as in this example:The mark is the colour blue (Pantone xxx) as shown in therepresentation attached to the application, applied to the exteriorsurface of the goods.Where the applicant does not file either a representation of the colour(s) or anacceptable description of the colour(s), the application will be deemed not tomeet the requirements of regulation [42(1)(b)] of the [2003] Regulations, andaccordingly an application number and a filing date will not be allocated.[68] To the extent that the guidelines suggest (in two places) that a description ofthe colour is merely an alternative to a representation of the colour, we do not considerthat the guidelines accurately reflect the obligation in reg 44. Although the colourdescription may be supplied subsequent to filing the application, the applicant mustsupply the description before the application can be accepted.The chronology of the application for TM 795206[69] As originally filed on 29 August 2008 the application for registrationsimply stated:54 This relates only to applications to register a colour or colours as a trade mark, not where colouris an element of a device or pictorial mark.The colour swatch, in the form of a roughly square piece of green painted aluminium,was affixed by a staple to the application form. There was no verbal description.[70] The compliance report of 21 October 2009 addressed both the requirement fora colour explanation and the manner of use of the colour on the goods. It stated:Written explanationRegulation 44(g) of the [2003 Regulations] requires that, in addition to thepictorial representation of your mark you have provided, you also must supplyan appropriately worded explanation before the mark can be accepted.The explanation must contain a description of the colour(s) using a widelyknown and readily available colour standard, such as the colour indexingscheme of the Pantone® colour system. The explanation may also includeinformation about where/how the colour(s) will be used in relation to thegoods/services. For example:The mark is the colour blue (Pantone ® 123), as shown in therepresentation attached to the application, applied to the exteriorsurface of the goods.Please provide us with the appropriate colour explanation for your mark.As no amendment of the written explanation is allowed after entry on theregister we will only enter the written explanation of the mark after thewording has been agreed with the Office.(Footnote omitted.)[71] Frucor proceeded to gather evidence in support of its application and soughtadditional time for its prosecution. By March 2011 Frucor had provided sufficientevidence of use that the Commissioner was prepared to allow the application toproceed to acceptance on the basis of acquired distinctiveness. However inthe compliance report of 2 May 2011 the Commissioner stated:Before we can do so we require an explanation of the mark describing how itis used. The explanation would be worded along the lines of the followingexample:The mark consists of the colour green (Pantone 376c) as shown in therepresentation attached to the application, applied as the predominantor predominant background colour to the packaging of the specifiedgoodsWe await your advice on the applicant's suggested explanation.[72] After some negotiation between Frucor and IPONZ during 2011, agreementwas reached on the formulation of the explanation which appears in the registration,namely:The mark consists of the colour green (Pantone 376c), as shown in therepresentation attached to the application, applied as the predominant colourto the goods, their packaging or labels. Section 18(2) of the Trade Marks Act2002 applies.[73] Thus, although the trade mark as originally sought comprised merely the colourswatch as the representation, in its final form the subject matter of the applicationcomprised the colour swatch as a sample of the colour, the specified Pantone shadeand the verbal description.55The meaning of "predominant"[74] While contending that the natural plain meaning of "predominant" providessufficient certainty "as to what is covered" by the Registration, Frucor did not advancea specific meaning of the word in the context of the phrase "predominant colour".However the tenor of its submission was that the word imported a quantitativedescription:Frucor's trade mark is for Pantone 376c applied as the main colour on thepackaging of energy drinks or their labels. A competing producer of energydrinks could therefore avoid infringement by selecting a different shade ofgreen that was not confusingly similar to Pantone 376c, or by applyingPantone 376c only as a minor part of its packaging or labels. Only acompetitor seeking to use Frucor's exact shade to a large extent on thepackaging of energy drinks would face uncertainty about the exact limits ofthe mark.(Emphasis added.)55 Similar to that in Société des Produits Nestlé SA v Cadbury UK Ltd, above n 17, at [6].[75] Mr Brown drew attention to several other colour trade mark registrations inwhich different formulae were used to identify the extent of the coverage of the goodsthe subject of the trade marks. One example was the explanation in TM 801503 whichstated:- The mark consists of the colour beige (Munsell notation no. 3.9Y 7.12/1.4),which is a close approximation of Pantone 7534 or RGB No. 208 204 184, asshown in the representation attached to the application, as applied to themajority of the outer surfaces of the goods. The provisions of section 18(2)of the Trade Marks Act 2002 apply.(Emphasis added.)Another example was TM 614236, the explanation for which stated:- The mark consists of the colour Mauve (Pantone 14-3904) applied to onesurface of the goods as shown on the representation attached to theapplication. This mark was advertised before acceptance under section 27(1)of the Trade Marks Act 1953.(Emphasis added.)A still more specific example is TM 806560, the explanation for which stated:- The mark consists of the colour blue (Pantone PMS-072 C), as shown in therepresentation attached to the application, applied to the tips of the goodscovered by the application. The provisions of section 18(2) of theTrade Marks Act 2002 apply.(Emphasis added.)Yet another example which focused on the spatial application is TM 285611, whichemploys the adverb "predominantly" but without qualification of the colour:- The mark consists of the colour purple (Pantone 2685C), as shown in therepresentation attached to the application, as applied predominantly to thepackaging of the goods.(Emphasis added.)In each of those four examples the image shown on the register is an oblong ofa colour.[76] However the word "predominant" can convey both quantitative andqualitative notions. For example in Black's Law Dictionary the word is defined as:56More powerful, more common, or more noticeable than others; havingsuperior strength, influence, and pervasiveness.[77] These different modes of assessment were recognised by Sir Timothy Lloyd inCadbury UK:57[Counsel for Cadbury UK]'s primary contention was that a colour waspredominant, in this context, if it covered more than 50% of the surface areain question. If this is right, and if that is what was intended, then it might bepossible to achieve certainty by spelling that out in the registration application.It could have read: "applied to the whole visible surface, or to more than 50%of the area of the visible surface, of the packaging of the goods". But it is notdifficult to imagine other tests which might be applied to determinepredominance in respect of colour. If the contrast is between two differentcolours, one which is stronger or more eye-catching, or is applied to a moreprominent part of the packaging, might be seen as predominant even if it wasapplied to a smaller area than another colour (including white).[78] For the purposes of analysis it is convenient to consider separately thequantitative and qualitative methods of assessment of colour predominance.(a) Quantitative analysis[79] Let us assume that the application of a colour to 60 per cent of the surface of abeverage can constitutes a predominant application. The tenor of Mr Arthur'sargument appears to be that there are many ways in which a single colour (say green)may be applied to a beverage can which would result in a coverage between60 per cent and 99 per cent. Thus it would include a reasonably extensive backgroundcoverage, as is the case in respect of Frucor's product "V".[80] However it would also include a style of decoration of a beverage cancomprising green coloured geometric shapes, such as circles, triangles and stars,against a contrasting background such as silver. Similarly it would include decorationby green coloured images in the shapes of hearts, diamonds, spades and clubs setagainst a contrasting (silver) background. It could also encompass vertical or56 Bryan A Garner Black's Law Dictionary (11th ed, Thomson Reuters, St Paul, 2019) at 1426.57 Société des Produits Nestlé SA v Cadbury UK Ltd, above n 17, at [63].horizontal stripes, whether as straight, jagged or wavy lines, of green colour against acontrasting (silver) background.[81] It appears from the evidence that none of those variants have been usedby Frucor. However each of them could be deployed so as to cover at least 60 per centof the beverage can. On a quantitative basis therefore they would all constitute thepredominant colour. Hence they would all be signs within the umbra ofthe Registration. We did not understand Frucor to take issue with that proposition.(b) Qualitative assessment[82] Sir Timothy Lloyd in Cadbury UK referred to the further scenario of colourpredominance where one colour is stronger or more eye-catching than a secondcontrasting colour, even though the first has a lesser area of coverage than that secondcolour.58[83] In developing that theme by reference to well-known colour combinations, onemight ask whether the red circle on the Japanese flag is the predominant colour?Although its coverage is less than the white background, it might be viewed aspredominant, either by reason of being more eye-catching or as a result of its centrallocation (or both). However would a red circle cease to be predominant if set againstanother vivid colour, such as green in the flag of Bangladesh? Similarly would theyellow circle or the blue background be the predominant colour in the flag of Palau?[84] Furthermore, might the perceived "predominance" of one colour over anotherbe affected by the manner of their juxtaposition? Staying with the flag method ofanalysis, is the predominant colour of the Swedish flag the blue (which covers thelarger area) or the yellow comprising the cross? And might blue or white be said tobe the predominant colour of the Scottish flag? Perhaps both? For, in the materialssupplied by Mr Brown with his submissions, there were examples of trade markregistrations specifying two and three colours as "predominant". One such examplewas the explanation in TM 829135 which stated:5958 Société des Produits Nestlé SA v Cadbury UK Ltd, above n 17, at [63].59 Other examples of registrations for dual predominant colours were yellow/blue and orange/black.The trade mark consists of the colours ORANGE, specifically identified asRAL2010 and GREY specifically identified as RAL7035, as depicted in therepresentation attached to this application, as the predominant colours appliedto the exterior surface and packaging of the goods covered by this applicationAnother example was TM 1061668 which included the following explanation:The trade mark consists of the colours HYPER GREEN (PMS 388C),DARK GREY (PMS 446C) and LIGHT GREY (PMS Cool Grey 5C), as thepredominant colours applied to the exterior of the goods, as shown in therepresentation attached to the application. In both instances the representation appears to be a rectangle comprising blocks of therespective colours.60[85] In theory, at least, it could be contended that the colour Pantone 376C could beapplied to a beverage can so that it covered less than 60 per cent (or even less than50 per cent) of the surface of the can but, because of the neutral shade of thecontrasting colour or colours (or their multiplicity), the Pantone 376C green was thepredominant colour.[86] For these reasons we agree with Sir Timothy Lloyd that the use of the adjective"predominant" to qualify the colour comprising a trade mark renders the descriptiontoo subjective and imprecise. We find unconvincing the reasoning ofthe Assistant Commissioner that whether a colour is predominant in any given context"will depend on the particular circumstances".61 Actual or potential competitors areentitled to know the scope of the mark applied for and registered. It is the function ofthe register to provide that information. The information which the register shouldconvey to an inquirer should not be dependent on the "particular circumstances".[87] Nor do we consider it appropriate that the act of ascertaining that knowledgefrom the register should require "a difficult judgement".62 That observation ofthe Assistant Commissioner seems to us to contemplate the process of making a60 In both registrations it was stated the provisions of s 18(2) of the Trade Marks Act 2002 applied.61 Invalidity decision, above n 4, at [55]. See [24] above.62 At [55].determination on trade mark infringement. That was certainly how the Judge appearsto have construed that observation when stating:63The Assistant Commissioner acknowledged that whether a competitor wasusing the sign that was identical or merely similar to the registered trade markmight involve a difficult judgement.[88] However the issue with which we are concerned is the clarity of the registeritself. In our view, absent further particularity either by way of a written descriptionor an appropriate visual representation, the description of a colour trade mark bymeans of the phrase "the predominant colour" (albeit accompanied by the requisitereg 44(g) description) will generally be an insufficient mode of identification of atrade mark.[89] Of course, where the colour in question is explicitly confined to use as abackground colour, against which various logos or product information are set, thenthe description of "a predominant background colour" might be acceptable. Howeverthe proposal for the inclusion of such a phrase was rejected by Frucor in the course ofits negotiations with IPONZ64 and hence we did not hear argument on that proposition.Whether a registration may cover multiple signs?[90] We turn to consider Mr Arthur's second argument, which is that even if the useof "predominant" in the Registration is unambiguous, nevertheless the consequenceof its use is that the Registration would cover a range of signs. Mr Arthur againinvokes the reasoning in the Cadbury UK decision, where the application was for atrade mark shown as a rectangular purple block and was described as:65The colour purple (Pantone 2685C), as shown on the form of application,applied to the whole visible surface, or being the predominant colour appliedto the whole visible surface, of the packaging of the goods.[91] If the description at issue in Cadbury UK had been confined to the applicationof the colour purple to the whole visible surface of the packaging of the goods, thenwe apprehend that no difficulty would have arisen. The application would have been63 High Court judgment, above n 5, at [58].64 See [71] above.65 Société des Produits Nestlé SA v Cadbury UK Ltd, above n 17, at [5].for only one sign. However, as Sir John Mummery explained, the inclusion of thealternative mode of colour treatment incorporating use of the word "predominant"opened the door to a multitude of different visual forms.66 It was not just anunchanging application of a single colour. Rather there was wrapped up in the verbaldescription of the mark an unknown number of signs.67[92] This point was reiterated in a judgment delivered on the same day by the sameCourt of Appeal panel in JW Spear & Son Ltd v Zynga Inc, which concerned aregistered trade mark (the tile mark) associated with the popular word gameScrabble.68 The verbal description stated that it consisted of a three-dimensionalivory-coloured tile on the top surface of which was shown a letter of theRoman alphabet and a numeral in the range 1 to 10. Following Cadbury UK the Courtheld that the tile mark was not a sign because it potentially covered many signsachievable by numerous permutations, presentations and combinations of the subjectmatter of the registrations. There was no graphic representation of the sign which metthe requirements of clarity, precision and objectivity.69[93] The approach in the Cadbury decision was followed in a further decision ofthe Court of Appeal of England and Wales in Glaxo Wellcome UK Ltd v Sandoz Ltd(No 2).70 In the course of his judgment Kitchin LJ (as he then was) explained:[35] Secondly, the function of the graphic representation is, in particular,to define the sign so that the subject matter for which protection is sought orhas been secured can be clearly and precisely identified by the competentauthorities and the public. Moreover and importantly, in order to fulfil its roleas a trade mark and meet the requirements of precision and clarity, the signmust always be perceived unambiguously and uniformly. In my judgment itfollows that if the authorities and the public are left in a state of confusion asto the nature of the sign then these requirements will not be satisfied.[36] The reasons for these requirements are plain to see. A mark mustalways be perceived unambiguously if it is to fulfil its function as an indicationof origin. 66 At [50].67 At [55].68 JW Spear & Son Ltd v Zynga Inc [2013] EWCA Civ 1175, [2014] 1 All ER 1093.69 At [32]. Those requirements had to be met to comply with art 2 of Directive 95/2008 of theEuropean Parliament and of the Council of 22 October 2008 to approximate the laws of MemberStates relating to trade marks [2008] OJ L299/25.70 Glaxo Wellcome UK Ltd v Sandoz Ltd (No 2), above n 21.[94] The thrust of EBL's argument is that, in addition to the use of Pantone 376C asthe background colour (which appears to have been the nature of the use relied uponto establish the requisite distinctiveness to secure registration), the Registration wouldalso embrace all the various styles of decoration described at [80] above. In short, itwould cover the use of Pantone 376C as the predominant colour "in everyconceivable form". That was the express form of explanation of the scope of thetrade mark sought in Heidelberger Bauchemie GmbH, where the trade mark consistedof the applicant's corporate colours (a rectangle with the upper part blue and the lowerpart yellow).71[95] Mr Arthur's contention is that, even though it is most unlikely that Frucorwould have used any of those other variants of colour application, and certainly not tosuch an extent as to cause people to perceive them all as trade mark use, theconsequence of the vague description comprising the Registration (the colour swatchand the "predominant colour" formula) was that each and every such variant would becaptured by the umbra of the trade mark. Use of any of them by another trader wouldconstitute an infringement as an identical mark. The need to demonstrate confusingsimilarity would not arise.[96] To illustrate the umbra point, if upon the silver background of a beverage canthere was applied either the Coca-Cola or Guinness names in Pantone 376C green andin sufficient size or repetition so as to cover 60 per cent of the surface of the can, suchuse would be within the umbra of TM 795206. Hence it would constitute aninfringement, notwithstanding that it bore no similarity to Frucor's background use ofthe colour and could not be confused with Frucor's use.[97] Mr Brown did not shrink from supporting that proposition. He contended thatif 60 per cent of a competitor's energy beverage can is coloured in Pantone 376Cgreen, whether in the form of stars or hearts or diamonds or clubs, that would be withinthe scope of the umbra and infringe. Indeed, save for what he described as the"carv[e] back" in the form of the written explanation required by IPONZ, the71 Case C-49/02 Heidelberger Bauchemie GmbH [2004] ECR I-6152 at [10].Registration would have covered any use of Pantone 376C green on the packaging"however many variations there were".[98] His contention, that in New Zealand law a single sign may comprise manypermutations, was based on two primary arguments: first, the definition of "sign" inthe Act; secondly the different legislative regimes in the United Kingdom, Europe andNew Zealand. So far as the former was concerned, he drew attention to the fact thatthe definition of "sign" in s 5(1) of the Act is an inclusive one.72 After the list in (a)of brand, colour, device, heading, label, letter, name, numeral, shape, signature, smell,sound, taste, ticket, or word, he emphasised that (b) refers to "any combinationof signs". He construed that phrase as not merely permitting a sign comprised ofmultiple components but also a sign comprising many different permutations.[99] The use of the phrase "or any combination thereof" in the definition of "mark"dates back to at least the Trade Marks Act 1905 (UK) and the Patents, Designs, andTrade-marks Act 1911. That phrase is designed to accommodate a mark whichcombines more than one of the indicia listed in (a), such as the tab of contrasting colouron the rear pockets of jeans manufactured by the plaintiff in Levi Strauss.73 We do notaccept the proposition that the absence of that phrase in the Trade Marks Act 1994(UK) or in the Directive resulted in a dramatic narrowing of the law in Europe,whereas by contrast New Zealand law permits a single registration that incorporatesmultiple signs. The only qualification is the statutory concept of series marks, whichhave long been recognised.74[100] Turning to the second justification, in the High Court Mr Brown distinguishedthe requirements for clarity and precision of trade marks in the European jurisprudencefrom the requirements in the 2002 Act, emphasising that the European decisionsrequire a graphically represented sign to be "clear, precise, objective, durable,self-contained, easily accessible and intelligible" in order to comply with art 2 ofthe Directive.75 The Judge endorsed that proposition, stating that he did not accept72 See [6] above.73 Levi Strauss & Co v Kimbyr Investments Ltd, above n 26, at 338.74 See the definition of "series of trade marks" in s 5(1) of the Trade Marks Act 2002.75 High Court judgment, above n 5, at [60]; and Directive 89/104 of 21 December 1988 toapproximate the laws of the Member States relating to trade marks, above n 40.that the "strict requirements" for the definition of a mark in the Europeanjurisprudence was either necessary or appropriate in the context of the New ZealandAct.76 Mr Brown renewed that submission in this Court, as reflected for example inthe following contention:Similarly Glaxo concerned an EU trade mark which, as the [Court of Appealof England and Wales] noted, has the requirement in Art 4 [of Regulation207/2009 of 26 February 2009 on the European Union trade mark]"as interpreted by the CJEU that the sign is capable of being representedon the register in a clear and precise way which enable[s] the relevantauthorities and the public to determine the precise subject matter of theprotection." Again this is not part of the New Zealand [Act].(Footnote omitted and emphasis in original.)[101] We do not accept the distinction Mr Brown seeks to draw. As earlier noted,77it is essential for traders, whether in Europe or in New Zealand, to be able to identify"with clarity" the identity of a registered trade mark and hence the scope of the umbra,the penumbra, and what lies beyond the penumbra.78 The emphasis in New Zealandon the requirement for clarity is manifest from the introduction of the adjective "clear"in reg 42(1)(b) of the 2003 Regulations, qualifying the word representation.79The economy of language in the New Zealand legislation, in contrast to the collectionof criteria in the European jurisprudence (described by the Judge as "strict"), cannotsustain the proposition that there are gradations of clarity. A representation is eitherclear or it is not.[102] As Williams J observed in AA Insurance Ltd v AMI Insurance Ltd, unless atrade mark communicates the origin of a product in trade it will not be entitled to themonopoly advantages registration provides.80 We endorse the Glaxo Wellcomeproposition that a mark must always be perceived unambiguously if it is to fulfil itsfunction as a trade mark.81 If the authorities and the public are left in a state ofuncertainty or confusion as to the nature of a sign, then it is insufficiently clear to be76 High Court judgment, above n 5, at [66].77 At [64]–[65] above.78 Swizzels Matlow Ltd's Application, above n 50, at 885.79 By contrast prior to the 2019 amendment s 32 of the Trade Marks Act 1994 (UK) referred toa "representation" simpliciter.80 AA Insurance Ltd v AMI Insurance Ltd [2012] 1 NZLR 837 (HC) at [1].81 See [93] above.registered as a trade mark. In our view the Registration offends in that respect.82We also agree with the further point made by Kitchin LJ that trade marks of uncertainscope offend against the principle of fairness because the uncertainty as to the subjectmatter of the mark gives its owner an unfair competitive advantage.83[103] In 1909 Sir Herbert Cozens-Hardy MR said:84Wealthy traders are habitually eager to enclose part of the great common ofthe English language and to exclude the general public of the present day andof the future from access to the enclosure.The lexicon of English words is broad. However, as Mansfield J observed inPhilmac Pty Ltd v Registrar of Trade Marks,85 while in a scientific context the rangeof colours available to traders for application to goods is in fact infinite, in the contextof trade mark law that is not the case.86 The authors of the current edition ofKerly's Law of Trade Marks and Trade Names suggest that most applicants for signswhich simply comprise a block of one colour or a combination of colours "decline tospecify just how vague their sign really is".87 They maintain it is important tounderstand what is being claimed. We agree. The argument on this appeal hashighlighted such importance.[104] Single colours are not, to employ the taxonomy of the 1953 Act,inherently distinctive. As the registration history for TM 795206 demonstrates,registration was only obtained by evidence of use.88 Similarly, most of the other"predominant colour" trade mark registrations under the 2002 Act to which we werereferred record the notation "section 18(2) of the Trade Marks Act 2002 applies".It would be our expectation that the requisite distinctiveness would correspond to and82 Glaxo Wellcome UK Ltd v Sandoz Ltd (No 2), above n 21, at [35]–[36].83 At [80].84 Re an Application by Joseph Crosfield & Sons Ltd to Register a Trade Mark ("Perfection") (1909)26 RPC 837 (CA) at 854.85 Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551, (2002) 126 FCR 525 at 544–545.86 In Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-3793 at [54] theCourt of Justice of the European Communities made the point that as regards the registration ofcolours as trade marks per se, not spatially delimited, the fact that the number of colours actuallyavailable is limited means that a small number of trade mark registrations for certain services orgoods could exhaust the entire range of the colours available.87 James Mellor and others Kerly's Law of Trade Marks and Trade Names (16th ed, Sweet &Maxwell, 2018) at [2-082].88 Trade Marks Act 2002, s 18(2).reflect the actual use demonstrated and relied upon. If Mr Brown's proposition wassound for TM 795206, then it would follow that all the other predominant colourtrade mark registrations which were in the material before us would be similarlyextensive in scope.[105] Traders wishing to monopolise colours should take pains to be clear and not bevague as to the boundaries of the registrations which they intend should preclude useby others of the full spectrum of colours. An obvious way to do so is to include in theapplication a representation of the spatial application of the claimed colour, a numberof examples of which were in the materials placed before us.89 While visual spatialrepresentations have obvious advantages, it is possible to provide sufficient claritywith a verbal description, as demonstrated by TM 644331 in which a rectangle oftwo colours is accompanied by this description:The mark consists of the colours blue (Pantone Reflex Blue C) and silver(Pantone 877C), as shown in the representation attached to the application,and as applied in combination and in relative proportions of 50% blueand 50% silver in diagonally or transversally extending stripes or lines,applied to the external surface of a drink container.(Emphasis in original).In consequence persons inspecting the register can readily appreciate the umbra of thetrade mark and make informed decisions as to the likely penumbra.[106] For these reasons, had we reached a different conclusion on Issue 1, we wouldhave ruled that the Registration was invalid both because in its use of "predominant"it is insufficiently clear and because in its terms it extends to cover multiple signs.89 For example, TM 127422 comprised images of an inflatable boat with the description: "The trademark consists of the predominantly yellow colour of the inflatable structure with trim in acontrasting darker colour as shown in the representation attached to the application"; TM 300376included an illustration of a uniform with the description: "The mark consists of the colourmedium brown as shown in the representation attached to the application, being the predominantcolour applied to the visible surface of uniforms worn by staff in the performance of the services";and TM 00375 comprised illustrations of vans with the description: "The mark consists of thecolour brown (Pantone 462c) as shown in the representation attached to the application, being thepredominant colour applied to the visible surface of vehicles used in the performance of theservices".Issue 3: Did the Judge err in holding that the Registration should be interpretedas being defined by the written description of the colour on the register, namelyPantone 376C?[107] Before considering the second attack on the validity of the trade mark weconsider it is first logical to determine the true construction of the trade mark.In practical terms that is what occurred in the decisions below. Although the AssistantCommissioner's decisions were issued on the same day, the revocation decision90bears the earlier number and is referred to in the invalidity decision.91 Likewisethe Judge deferred the second invalidity ground until his consideration of therevocation appeal.92[108] Mr Arthur emphasised that the register is a public register of registeredtrade marks searchable by any person93 and that its interpretation should be from theperspective of a member of the public, including trade competitors. He framedthe question: how would the public interpret the Registration, which comprisesa representation of a dark green colour with a written description that "[t]he markconsists of the colour green (Pantone 376c) as shown in the representation attached tothe application"?[109] Mr Arthur submitted that contrary to both the UK and Australian approachesthe Judge interpreted the trade mark registration solely by reference to the writtendescription,94 adopting what he considered was the approach in Levi Strauss.Mr Arthur noted however that Levi Strauss held that, because the written descriptioncommenced with the words "the mark consists of" and the visual representation waswholly inadequate on its own to define precisely what the Commissioner had agreedto as the scope of the trade mark, the words governed the delineation of thetrade mark.95 He observed that Williams J did not say that the visual representationwas irrelevant in defining the trade mark, just that it did not alone delineate theboundaries of the trade mark.90 Revocation decision, above n 4.91 Invalidity decision, above n 4, at [58].92 High Court judgment, above n 5, at [74].93 Trade Marks Act 2002, ss 181–184; and Trade Marks Regulations 2003, reg 129.94 High Court judgment, above n 5, at [91].95 Levi Strauss & Co v Kimbyr Investments Ltd, above n 26, at 352.[110] Mr Arthur submitted that if Levi Strauss was to be interpreted as authority forthe proposition that when a written description uses the words "the mark consists of"then the visual representation becomes irrelevant, it should not be followed. There isnothing in the Act to give primacy to the written description. As he said:It would be surprising if the law did not accord significant status to the visualrepresentation. The [2003] Regulations require a representation. The trademark owner having chosen to file a visual representation, andthe Commissioner having included a visual representation on the register, itwould be unlikely that the visual representation would be irrelevant ininterpreting the [R]egistration. That is especially so when the mark is for acolour and there is no statutory requirement for the description even to appearon the register.[111] Mr Arthur submitted it is difficult to perceive why the public would explorebeyond the representation on the register and there is nothing on the register to suggestany inconsistency which would lead them to do so. The public has no reason to checkwhether the colour of the representation is in fact Pantone 376C. Even if they didcheck they would then be left with the uncertainty of whether the registration is forthe colour shown or for Pantone 376C. There would be no reason for them to elevatePantone 376C above the representation.[112] In the present case two sources were provided as a means of identification ofthe colour the subject of the application, namely the colour swatch physically attachedto the paper application form and the Pantone code. We recognise the force ofMr Arthur's point that it would not be possible now for a member of the public to seekout the colour swatch because, as the Assistant Commissioner recorded,96 the originalpaper files were not retained following the introduction of IPONZ's online system andthe digitisation of its records. That is certainly unfortunate, and in our viewinappropriate, given the number of accepted applications which, with IPONZsponsorship or endorsement, refer to a representation "attached to an application".[113] If there was no entry on the register of a verbal colour description by referenceto a code, then Mr Arthur's argument might gain traction. However reg 44(g) of the2003 Regulations ensures that if the trade mark is a colour or colours the applicant isto provide a description acceptable to the Commissioner. The reason for that96 Revocation decision, above n 4, at [53].requirement is to ensure certainty and consistency in the identification of the relevantcolour. Such a description is not susceptible to deterioration, fading or erroneoustransposition. In our view it is the form of identification of the relevant colour whichshould prevail in the event that there is any inconsistency on the face of the register.Indeed given the requirement in reg 44(g) we incline to the view that it is not nownecessary to include a colour swatch as an element of the representation.[114] In response to EBL's submission that there is no statutory requirement for thedescription to actually appear in the register, Mr Brown argued that s 182(g) of the Actrequires inclusion on the register of "any other prescribed matters relating to registeredtrade marks". He contended that reg 129 of the 2003 Regulations is not exhaustive asto "other prescribed matters". Because reg 44(g) specifically requires thatthe applicant must supply the description of the colour in the trade mark before theapplication can be "accepted", it is a prescribed matter. We agree with that submission.It would make no sense for a description of the colour to be specifically required byregulation as a fixed point of reference and then not to be treated as a prescribed matterfor the register.[115] Mr Arthur submitted that EBL's approach was consistent with that followed inthe Australian case of Frucor Beverages Ltd v Coca-Cola Company,97 citing thefollowing passage of Yates J:98A person inspecting the Register is entitled to act on the assumption that thetrade mark applicant's own depiction of colour in the representationaccompanying the applications is accurate.However, as that passage indicates, the difficulty in the Australian case was thatthe wrong colour was shown on the swatch accompanying the application and hencethe applicant's description of the trade mark was inherently inconsistent. That decisiondoes not assist in relation to the proper construction of the trade mark in thepresent case, where the colour swatch accompanying Frucor's application in factdepicted Pantone 376C.97 Frucor Beverages Ltd v Coca-Cola Company, above n 21.98 At [122].[116] For these reasons, the attack on the conclusions of the Assistant Commissionerand the Judge concerning the interpretation of the Registration fails. It follows thatEBL's non-use challenge cannot succeed.Issue 4: Does the difference between the darker shade of green in the image onthe register and the written description Pantone 376C mean the Registration isambiguous and too imprecise?[117] The determination on this question is provided by our answer to Issue 3.Undoubtedly the colour image for TM 795206 on the register is different from thenominated Pantone code. However that ambiguity is resolved in favour of thePantone code because the description of the colour required by reg 44(g) must prevail.Hence properly understood the Registration would not be ambiguous and notsusceptible to an invalidity challenge on that ground.Result[118] The appeal is dismissed.[119] The appellant must pay the respondent costs for a standard appeal on a band Abasis and usual disbursements. We certify for second counsel.Solicitors:Simpson Grierson, Auckland for AppellantBell Gully, Auckland for Respondent