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Focus: Trade Marks – November 2004

BP secures green as a colour registration in Australia

In brief: A recent case confirms that colours or colour combinations can be valid trade marks, although applications are more likely to succeed if they can be connected to a distinctive shape of goods. Trade Marks Attorney Kimberley Trainor reports. 

Facts

In July 1991, BP, one of the world's largest oil and gas producing groups, filed three applications for registration of 'the colour green' in Part A of the Register of Trade Marks under the Trade Marks Act 1955.  Following the commencement of the Trade Marks Act 1995 on 1 January 1996, these applications were dealt with as one pending application (no. 559837), which sought registration of the colour green for goods in class 4 (oils, greases etc) and services in class 37 (maintenance and repair etc).

In October 1995, BP filed another application (no. 676547) for registration of the colour green as a trade mark for services in class 42 (retailing services relating to filling stations etc). However, as the Trade Marks Act 1995 had commenced, both pending applications 559837 and 676547 were dealt with under that Act. The applications sought registration of a particular shade of green that was applied to a significant proportion of the exterior of the buildings, canopies, pole signs and other components of service stations used for the sale and supply of BP's designated goods and services.

The applications were eventually accepted for registration in July 1997 and were opposed by Woolworths. Woolworths was successful in its opposition before the Trade Marks Office and BP appealed this decision to the Federal Court of Australia. On 25 October 2004, Justice Finkelstein allowed BP's appeal and directed that the applications proceed to registration.  

The case

The two main issues before the Federal Court on appeal were:

  • whether an amendment to one of BP's applications had been properly made during prosecution; and
  • whether the colour marks were capable of distinguishing BP's goods and services from the goods and services of other traders as required by section 41 of the Trade Marks Act 1995.

The second issue is significant for parties interested in registering colour marks in Australia. Although this was an 'appeal', the parties were able to lead new evidence in support of their cases, and did so, such that the evidence considered by the court was considerably different to the evidence considered in the opposition before the Trade Marks Office.

Justice Finkelstein considered the application of s41 to a colour trade mark. One starts from the position that the Trade Marks Act 1995 specifically contemplates that a trade mark may be a single colour and it does not suggest that the registrability of a colour mark is to be approached any differently from the registrability of any other trade mark.

Justice Finkelstein did not consider that the shade of green for which BP sought registration of its trade mark had any inherent adaptability to distinguish BP's goods or services. The trade marks would only be determined as distinctive of BP's goods and services if by the filing date of each application the colour green had acquired a secondary meaning.

BP had to establish two things:

  • that it had used a particular shade of green as a trade mark, and
  • that, in the minds of the public, the primary significance of that shade of green, when used in connection with the supply of petroleum products or the provision of petroleum services, identified the source of those goods or the provider of those services as originating from a particular trader (although not necessarily from an identified trader).

Most objects have to be some colour, so merely applying a colour to a product will not act as an identifier for that product. In deciding whether colour functions as a trade mark, it is necessary to determine whether the trader has used the colour in a way that informs the public that the product comes from a particular source.

The decision

BP led considerable evidence of its use of the colour green over many years in Australia for its petroleum goods and services. It also led evidence of a survey conducted in 2001 to determine the public's reaction to the colour green. The survey was administered in shopping centres around Australia in both capital cities and regional centres, and 40 per cent of those shopping centres were located within a two-kilometre radius of a Caltex, Woolworths or BP service station.

The respondents were informed that a survey was being conducted about a building. They were shown an A3-sized drawing of a 'large' service station. The expert giving evidence about the survey said that the shape and style of the service station 'was deliberately chosen to be unlike any of BP's recent designs'. There was no branding on the service station. However, the fascias of the building, the petrol pumps, poster boards, price boards, signage boards and the canopy were all coloured green. Various questions were asked about what the respondents saw in the drawing. A total of 1,544 interviews were conducted. When shown the drawing, 47 per cent of respondents said that it suggested BP. When those who did not mention a brand were asked whether the drawing suggested any brand, 38 per cent nominated BP.

His Honour concluded:

From all of the evidence there is at least one inescapable conclusion. It is that each major oil company that retails petroleum products through service stations has adopted a get-up for its stations which is distinctive of that company's products.  ... So far as BP is concerned, there is simply no doubt in my mind that its get-up, with its predominant use of green, is a badge of origin. Not only do consumers know that a predominantly green (in a particular shade) service station signifies a source, for the most part they also know that source to be BP.

Despite green being the predominant colour, BP also uses the colours white and yellow. His Honour therefore considered whether the colour green could be extracted from the BP 'get up' as a separate trade mark and concluded:

Separate components of a single get-up or design may qualify for registration as a mark. They will be capable of registration if each feature considered separately distinguishes the goods or services in question. If the get-up or design creates a 'separate and distinct commercial impression' then the separate parts will not be registrable. However if each separate part creates an impression which is totally separate from the others and is distinctive, that is it performs the trade mark function of identifying the source of the goods and services to customers, that will suffice.

Colour marks generally

This case confirmed that 'colours or colour combinations give rise to valid trade marks' under the Trade Marks Act 1995, emphasising that applications to register colour trade marks are more likely to succeed if they can be connected to a distinctive shape of goods or, as in this case, the layout and design of a petrol station.

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