Search 
Mallesons Stephen Jaques
Author
Natalie Hickey  
Partner
Natalie Hickey  
Partner
T +61 3 9643 4156

Sydney
Scott Bouvier  
Maurice Gonsalves  
Kristin Leece  
Kim O'Connell  
Katrina Rathie  
 

Melbourne
Robert Cooper  
Natalie Hickey  
Cheng Lim  
Wayne McMaster  

Perth
Nigel Hunt  

Brisbane
John Swinson  

Canberra
Adam Bartlett  

Use of green and gold by BP defeats its colour trademark application for green - 12 September 2006

On 4 September, the Full Federal Court overturned BP’s ability to register the colour green. The decision continues the controversy about what is needed to register colours as trade marks in Australia.

Lessons arising from the Woolworths v BP decision

The Full Court has laid down guidelines which require applicants to identify their colour marks with precision.

  • You can still register colour as a trade mark.
  • The colour which you want to register must have been used before the application date.
  • You must show use of the actual trade mark for which you are applying. Therefore you must be careful to match the description of the trade mark in the application with the colour actually used.
  • Instead of applying for a single colour trade mark, your prospects of a successful registration might be enhanced by applying for a combination of colours.
  • Ensure that internal documents reflect the proprietor’s intention to use a colour in a trade mark sense. Consider implementing an advertising campaign designed specifically to promote the colour (or colour combination) in a trade mark sense. This might later become important evidence in seeking registration of the colour as a trade mark.
  • Surveys are still likely to comprise useful evidence. However, make sure that the survey correlates with the nature of the trade mark applied for.
  • Be careful when amending trade mark applications to ensure that the amendment does not change the identity of the trade mark.

A further implication arises from the Full Court’s acknowledgment that BP and green gave rise to a mental “association” with each other, even though this did not satisfy the conditions for being a registrable trade mark. These comments may assist an alternative claim made under the Trade Practices Act 1974 (Cth) or common law passing off.

The use of colour in branding

The importance of colour, as a means of distinguishing a company’s brand, is recognised by the Trade Marks Act 1995 (Cth) which specifically contemplates that a colour, when used to denote a brand, can be registered as a trade mark.

But it was only really Justice Finkelstein’s decision in BP Plc v Woolworths Ltd [2004] FCA 1362 that paved the way for colours to be registered in practice. This case saw Finkelstein J uphold BP’s right to register the colour green as a trade mark. Predictably, the case was followed by a flurry of successful colour trade mark registrations.

In the eagerly awaited decision handed down last week, the Full Court of the Federal Court unanimously overturned the decision of Finkelstein J, refusing to accept that BP had satisfied the statutory requirements necessary to register the colour green (Woolworths Limited v BP plc [2006] FCAFC 132).

Background to the Woolworths v BP decision

In 1989, BP selected the green shade Pantone 348C as the predominant colour to be applied to BP’s service stations around the world. (Prior to this, BP had used green and yellow to promote its brand.) Over the next six years, 1356 retail service stations in Australia were re-imaged in accordance with this new strategy.

In 1991 and again in 1995 BP filed applications with the Trade Marks Office attempting to register the colour green as a trade mark. Notably, each application was subsequently amended. For instance, whereas the 1995 application had originally stated that the mark consisted of the “the colour green”, by October 1997 it had changed to a trade mark consisting of “the colour GREEN applied as the predominant colour” to the fascias of buildings, petrol pumps, signage boards and the like.

The applications were opposed by Woolworths Limited, which had also begun to market itself using the colour green. The applications were refused by the Registrar but appealed by BP to the Federal Court and heard, at first instance, by Justice Finkelstein.

In BP Plc v Woolworths Ltd [2004] FCA 1362 Finkelstein J adopted what has been labelled a “common sense” analysis. Rather than engage in a strict construction of the trade mark endorsement - which provided for the use of green as the predominant colour - Finkelstein J looked at the general “get-up” of the service stations to ascertain whether the relevant shade of green alone had become distinctive of BP’s goods and services. Finkelstein J acknowledged that BP had used the colour yellow, as well as the colour green. However, his Honour held that it was possible to dissect the total image and obtain trade mark registration of one component of it. Finkelstein J concluded, at [65], that “the colour green in the shade depicted in the applications had acquired a secondary meaning and had become distinctive of BP’s goods and services in the classes for which registration is sought when the applications were filed in 1991 and 1995 respectively”.

Woolworths sought leave to appeal to the Full Court. Although accepting Finkelstein J’s premise that the colour green was capable of acquiring distinctiveness and could be used as a trade mark, Woolworths contended that Finkelstein J’s judgment was not directed to the distinctiveness of the mark that had actually been applied for. Woolworths was granted leave to appeal.

The appeal was heard in Melbourne earlier this year before Heerey, Allsop and Young JJ.

The decision

The appeal to the Full Court concerned three main issues. First, whether the trial judge had erred in finding that the amendments to the endorsements of each of the applications were possible under section 65 of the Trade Marks Act. Secondly, whether each of the marks distinguished BP’s goods or services by reason of its prior use. Thirdly, whether the trial judge erred in his finding on the court’s power to grant relief. Although all three issues raise important considerations, the focus of this article is on the first and second points. That said, it is worth noting that Woolworths won on all three issues.

The Full Court found that the changes made to the 1995 application breached section 65(5) of the Act. It concluded that amendments could only be made so long as they did not substantially affect the identity of the original trade mark. However, by introducing the words “as the predominant colour” to the application, BP had significantly extended the trade mark’s scope. This was because the application had changed from being one where green was to be the only colour used, to one which allowed the use of one or more other colours as well.

In terms of the substance of the applications, the Full Court was critical of Finkelstein J’s more holistic “common sense” approach, and his failure to express his analysis in terms of section 41(6) of the Act. Finkelstein J’s view that BP’s total image could be dissected was rejected.

First, the Full Court found that it was necessary to show that the relevant trade mark had been used before the filing date. Secondly, that because of the extent of that use before the filing date, the trade mark distinguished the designated goods or services as those of the applicant.

BP failed to establish both elements. The difficulty with BP’s use of green, the court found, was that it was always used in conjunction with yellow. Even when green predominated in the colour scheme of service stations after 1989, “it was used with yellow as the subsidiary, but ever present companion” [at 105]. The use of green as described in the application did not correlate with BP’s actual use of the colour.

The Full Court’s findings about prior use flowed through to its consideration of the second requirement, distinctiveness. At trial, Finkelstein J had relied considerably on a survey conducted by BP’s expert, Dr Bednall. The stimulus material used in the survey involved a mock service station in the colour green. Participants were asked to describe what they saw, and 41.4% responded that it was “a BP service station”.

Whilst the Full Court conceded that this response rate indicated an “association” between green and BP, it held that the “mere fact that consumers associate green with BP does not, in our view, satisfy the test of distinctiveness required by s 41(6)”. It found that BP needed to establish that the association was referable to the use of the trade mark as a trade mark. Because BP had used green in conjunction with yellow, the court was not convinced that green (of itself) had been used in such a manner.

In addition, the Full Court stressed that the trade mark applications were not for the colour green alone (calling for the use of other colours as well) and so a survey concerning wholly green service stations was unhelpful.

It was concluded that BP had failed to establish the matters provided for in section 41(6) of the Trade Marks Act.

This publication is only a general outline. It is not legal advice. You should seek professional advice before taking any action based on its contents.