On 4 September 2006, the Full Court of the Australian Federal Court handed down judgment in Woolworths Limited v BP plc  FCAFC 132.
In essence, to establish that a colour has in fact become distinctive of your goods and services, it is necessary to use that colour alone, as the trade mark. BP had consistently used green with yellow and so failed to establish factual distinctiveness of its green colour mark.
My two most recent articles were:
Colour monopolies in Australia
Monopolies in colour have not faired so well in Australia to date. See also Cadbury’s failure in relation to the colour purple in Cadbury does not own the colour purple (in Australia, at least).
Acquiring distinctiveness in Australia
Under Australian law, to decide whether a trademark is distinctive (capable of distinguishing the applicant’s goods or services from those of others: 41(2)), the Registrar must consider whether the mark is inherently adapted to distinguish the applicant’s goods or services: s 41(3).
If it is not, the Registrar must then decide whether the mark is to "some extent inherently adapted to distinguish" those goods and services, and, if it is, whether its "use or intended use" will distinguish the applicant’s goods or services: s 41(5).
If neither s 41(3) nor (5) is satisfied, the Registrar must apply s 41(6), which in essence requires the applicant to establish: (1) that there has been use of the trade mark that is the subject of the application before the filing date; and, (2) that because of the extent of that use before the filing date the trade mark does distinguish the designated goods or services as those of the applicant.
In the present case, the Full Court was at pains to emphasize that it is the use of the trade mark, as a trade mark, before the application date that determines what can be registered. It is only where the extent of that prior use has had the consequence that the trade mark does distinguish the applicant’s designated goods or services from those of other persons that the trade mark is "taken to be capable" of so distinguishing the applicant’s goods or services: s 41(6)(a).
Distinctiveness of BP’s green
The Full Court found that notwithstanding a change in policy to make green the predominant colour, at all times it was used with yellow as the subsidiary, but ever present companion. Consequently, the Full Court concluded that the colours used to distinguish BP’s goods and services from those of its competitors were its existing brand colours, green and yellow, with a marked and clear predominance of green. Green, alone, was not used as a trade mark in the parts of the service stations referred to in the endorsements. In the words of the Full Court:
"Taking all of the evidence into account, including the absence of evidence as to the frequency of specific print or television advertising, we are unable to conclude that any trade mark use of colour by BP at the relevant times has been other than green as the dominant colour in conjunction with yellow as the subsidiary colour."
The litigation and the appeal
BP had made two applications for registration of the colour green in association with service stations. The appellant Woolworths Ltd opposed registration. A delegate of the Registrar of Trade Marks refused the applications on the ground that the marks were not capable of distinguishing BP’s goods and services: Trade Marks Act 1995 (Cth), s 41(2), (5) and (6). The primary judge allowed an appeal and directed that the applications proceed to registration: BP plc v Woolworths Ltd (2004) 212 ALR 79.
Woolworths did not challenge the primary judge’s conclusion that the colour green as such is not inherently adapted to distinguish BP’s goods and services but is capable of acquiring distinctiveness through usage as a trade mark.
The appeal concerned three main issues: (1) whether the trial judge erred in finding that the amendments to the endorsements of each of the applications were not made contrary to s 65 of the Act; (2) whether each of the marks does distinguish BP’s goods or services by reason of its prior use and whether the trial judge erred in finding that BP’s trade mark applications should be registered pursuant to s 41(6) of the Act; and (3) the Full Court’s power to grant relief.
The trade mark applications
After amendment application 559837 was in respect of:
"The trade mark consists of the colour GREEN as shown in the representation on the application applied as the predominant colour to the fascias of buildings, petrol pumps, signage boards – including poster boards, pole signs and price boards – and spreaders, all used in service station complexes for sale of the goods and supply of the services covered by the registration."
After amendment, application 676547 was in respect of:
"The trade mark consists of the colour GREEN applied as the predominant colour to the fascias of buildings, petrol pumps, signage boards – including poster boards, pole signs and price boards – and spreaders, all used in service station complexes for the supply of the services covered by the registration, as exemplified in the representation attached to the application form."
Findings on evidence of use
The court made the following findings in relation to evidence of use:
- In the context of the oil industry in which a small number of companies had for many years used colours to distinguish their goods and services from the goods and services of competitors, before 1989 BP used green and yellow to distinguish its service stations, goods and services from those of its competitors.
- By 1989, BP made a deliberate decision to change what might be called the colour branding of BP. Green was to be, and was, used more extensively than yellow in the livery of service stations and in advertising.
It continued, however, to be used with yellow.
- On the fascias of buildings, petrol pumps, signage boards, and spreaders in service stations, green was used as the predominant colour, but only with yellow. This use of green as the predominant colour, with the use of yellow, can be understood as trade mark use, replacing the use of green and yellow given approximately equal weight and prominence as the company’s brand colours before 1989.
- The question arises whether, after 1989, the advertising reveals not only the use of predominantly green with yellow as the company’s colours and as a trade mark, but also the use, as a trade mark, of green alone. This question cannot be answered simply by attempting to find an advertisement without yellow present, although there is no such advertisement in evidence. For the conclusion to be drawn that green alone was being used by BP as a trade mark prior to 1991 or 1995, one must understand the material as stating to the ordinary person that green alone was being used as a badge of origin to distinguish BP’s goods and services from those of its competitors.
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