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Focus: BP's registration of 'colour green' trade marks overturned

18 September 2006

In brief: The recent Full Federal Court appeal decision in Woolworths Limited v BP plc provides insight into the registration of colour trade marks based on acquired distinctiveness. AAR Patent & Trade Marks Attorneys Partner Andrew Butler and Articled Clerk Rosie Hooper report. 

Overview

BP plc (BP), one of the world's largest energy companies, sought a monopoly over its predominantly green colour scheme. It made two trade mark applications for registration of the colour green used in association with service stations. Both applications were subsequently amended in an effort to better describe the marks.

Woolworths Limited (Woolworths), which also uses green as an element of its colour scheme for its service stations, opposed registration. The Registrar of Trade Marks' delegate found in Woolworths' favour, taking the view that the marks were not capable of distinguishing BP's goods and services. BP won on appeal to the Federal Court and the primary judge directed that the trade marks be registered. Woolworths filed for leave to appeal but did not apply for a stay of the orders and the trade marks were subsequently registered. Despite this, the Full Federal Court granted Woolworths leave to appeal.

The appeal focuses on three main issues: whether amendments made to the applications were permissible; whether prior use of the marks could distinguish BP's goods or services; and whether the Full Court has the power to grant relief given the marks were registered. 

(See previous AAR publications for a review of the primary decision and the leave to appeal decision.)

Amendments to the endorsements: section 65(2) and (5)

In their original form, BP's applications were essentially for 'the colour green as shown in the representation'. In addition to a written endorsement, the first application included a green swatch, while the second displayed a drawing of a service station with green applied to various parts. The endorsements were subsequently amended to refer to 'the colour green as shown in the representation', applied as the 'predominant colour' to various parts of service stations.

In Woolworths Limited v BP plc [2006] FCAFC 132, the Full Court deemed these amendments impermissible under section 65 of the Trade Marks Act 1995 (Cth) (the Act). According to the court, amendments to the endorsements constituted amendments to the representation of the marks. Introducing the words 'as the predominant colour' had substantially altered the identity of each trade mark and, consequently, the amendments were contrary to s65(2) of the Act. Essentially, protection was being sought for different marks to those originally identified. The Full Court also found that the amendments contravened s65(5) of the Act, in that the scope of the mark would be extended to include cases where green could be applied (predominantly) with other colours.

Acquired distinctiveness: section 41(6)

The primary judge held that the colour green, in the shade displayed in the applications, was not inherently adapted to distinguish BP's goods and services. This was not challenged on appeal. Consequently, to qualify its marks for registration under s41(6) of the Act, BP needed to establish:

  • first, that it had used the shade of green specified in the application as a trade mark before the filing date; and
  • second, that because of the extent of that use the trade mark distinguished the designated goods or services as those of BP.

In the past, BP's corporate branding had utilised green and gold colours. However, BP led extensive evidence that following its 'Project Horizon' marketing campaign in 1989, it had deliberately promoted green as the predominant colour in its corporate branding. Additionally, BP supplied survey evidence that showed consumers associate green with BP service stations, independent of other colours.

The Full Court held that in assessing the evidence, the primary judge's attention had been diverted to BP's get-up and, consequently, s41(6) had not been applied to the full scope of the mark. While green was used predominantly in BP's marketing in relation to various parts of service stations, the Full Court noted that it was never used without its 'ever present companion' yellow. It held that green could not be extracted from the total image of BP's get-up to constitute evidence of use as a trade mark. Consequently, use of the colour green as a trade mark could not be established.

The Full Court found the survey evidence to be similarly unconvincing in that a use of green different from that claimed in the applications was the stimulus in the surveys. Consumers had been asked to respond to images where green was used as the only (not predominant) colour on various parts of service stations. In taking into account the full scope of the trade mark (and that it is not for use of the colour green alone), the Full Court found that BP should have used additional colours in its consumer surveys.

Full Court's power to grant relief

As the trade marks were already registered (Woolworths did not seek a stay of the primary judge's orders), the Full Court needed to decide whether it had the power to grant relief and, if so, whether it should grant such relief.

In light of its finding that the trade marks should not have been registered, the Full Court held that there was an error in the Register of Trade Marks (the Register) which should be rectified. Further, the court held that it had power to rectify that error by making an order to cancel the registration of the trade marks.

While Woolworths should have applied for a stay of the primary judge's orders, the Full Court recognised that the maintenance, integrity and accuracy of the Register was determinative. Trade marks that should not have been registered should not remain on the Register.

Implications: applying for colour trade marks

A colour scheme, being an easy way for consumers to associate products or services with a particular company, is an integral aspect of corporate branding. While registration of colour marks can prevent competitors freeloading off the well known get-up of a company, the Full Court's decision highlights the difficulties associated with gaining such registration.

The court's interpretation of the words 'applied as the predominant colour', as they appear in BP's amended applications, is noteworthy. Its view is that in their original form, the trade mark applications were for the use of green only, whereas following amendment, the trade marks could consist of a combination of colours, with green as the predominant colour. Arguably, BP's intention was that green would be the predominant colour and function as the trade mark, but other colours might also be present in its colour scheme. In any case, the Full Court's reasoning suggests that BP may have been more likely to succeed had it left the endorsements in their original form.

The key implications of this decision are as follows.

  • Avoid amending trade mark applications after publication. Amendments that substantially alter the identity of a mark, or that will otherwise extend an applicant's rights upon registration, will be impermissible.
  • Endorsements should accurately describe the way in which colour is intended to be used on goods or in relation to services.
  • Evidence of use in support of an application for a colour mark will, in most cases, need to be evidence of use of the mark for which registration is sought prior to the filing date (bearing in mind that a single colour cannot be extracted from an overall image).
  • Survey evidence in support of an application must establish that the trade mark for which registration is sought has acquired a secondary meaning, prior to its filing date. The survey stimulus should be chosen carefully, keeping in mind the intended use of the colour as described in the application.

Finally, where a future application for the registration of a colour mark is anticipated, a strategy should be adopted to establish long-standing use of the mark. While the fact that a competitor may also use the colour is not necessarily fatal to an application, an applicant will need to be sure that consumers readily identify the colour as a badge of origin of their company's products or services.

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