The Full Federal Court Issues An Important Ruling On The Registration Of Colour Trade Marks

In Woolworths v BP, which was decided on 4 September 2006, the Full Federal Court refused BP’s applications to register certain ‘colour green’ trade marks. The full court held that:

• BP’s trade mark applications had been amended after they were filed in a way that was impermissible under the Trade Marks Act 1995 (Act)
• those applications did not in any case satisfy the ‘distinctiveness’ requirement in the Act. The colour green marks were considered not to be inherently distinctive. The court found that on the evidence the trade marks, as filed, had not become distinctive through use. Although BP made extensive use of colour, including the colour green, in relation to its service stations, the use it had made was not trade mark use of those particular applications or of the colour green alone.

The case raises difficult questions of trade mark law, particularly as it applies to ‘non-traditional’ trade marks such as colour schemes. The full court’s ruling and its analysis should be carefully studied by all businesses who use, or are considering adopting, colour as a key component of their corporate branding, and who may wish to prevent their competitors from using similar colour schemes.

There are particular lessons for anyone responsible for filing a trade mark application for a colour mark. That application will need to describe with absolute precision, and with no room for ambiguity, the trade mark monopoly that is being sought—including in particular the manner in which the colour scheme is being used on or in physical or other relation to the relevant goods or services, to identify their source. This is no easy task when what is being protected is something as ‘abstract’ as a colour.

The relevant supporting evidence should be marshalled before filing the application to clarify that the application is supported by the evidence—which is not the standard approach and would involve greater investment than is usual at the initial stage of the trade mark prosecution process.

For colour trade marks that have already been protected overseas, it cannot be assumed that the form of the overseas application will necessarily be applicable in Australia or indeed that a colour trade mark that has been accepted as valid, for example, in the European Union would satisfy Australian requirements—at least without substantial ‘localising’.

There are also broader lessons for those responsible for launching a brand which includes a colour scheme. Under Australian law, the full court decision shows that it will be extremely difficult to protect the colour scheme as such—especially where the application is for a single colour—without substantial evidence of use proving that the scheme has become distinctive and an indicator of source.

Preferably, a strategic approach should be taken to both the adoption and the manner of subsequent use of a colour scheme as part of a brand, to maximise the prospect of later being able to obtain not only a valid but a strong trade mark registration.

The decision dealt with two main issues: whether the various changes to BP’s applications were allowable and whether those applications were (in any event) registrable based on the evidence. Both of these issues were decided against BP.

BP had made a number of post-filing amendments to its applications, grappling with the question of how best to describe these trade marks.

Initially, the applications were limited to a specific shade of green as shown in accompanying drawings (one of the applications simply depicted a square in that green shade, the other showed the same shade but applied to various parts of a sketch of a service station). Following the amendments, the applications covered the same shade of green ‘applied as the predominant colour to the fascias of buildings, petrol pumps, signage boards and spreaders, all used in service station complexes’.

The full court held that these amendments were not permissible under the Act for two reasons:

• In changing its written description of the colour marks, BP had substantially altered the identity of the trade marks—ie the amendments meant that in substance it was trying to protect different trade marks than those the subject of the original applications, which the Act does not allow.
• The amendments were found to have extended the scope of the claimed trade mark monopoly. This was because, as amended, the trade marks were interpreted by the full court as being no longer confined to a single colour, but instead as covering a trade mark which was predominantly green but which also necessarily included one or more different and unspecified colours.

At first instance, the court had found that BP’s colour marks lacked any inherent capacity to distinguish BP’s goods or services. This finding was not challenged on appeal. Accordingly, in order for those colour marks to be registrable, BP had to establish that, because of the extent to which it had used them before the relevant filing dates, the marks in fact distinguished BP’s goods and services.

The evidence clearly established that since 1989 BP had used the colour green as the predominant colour in its branding on service stations (previously its branding was green and yellow). But the evidence also showed the colour yellow remained ‘recognisably part of’ BP’s corporate colours, albeit subsidiary to the colour green.

Although the colour green was predominant, the evidence of BP’s own use of the mark did not in the full court’s view show that BP was using the colour green (alone) as its trade mark. Further, that evidence did not, in the court’s view show factual distinctiveness of a trade mark consisting of green combined with one or more other (unspecified) colours.

BP also relied on survey evidence to show that the colour green, in connection with service stations, was strongly associated with BP. The survey had involved showing interviewees a picture of a service station coloured predominantly in a shade of green (no yellow or any other colour was placed near the green and there was no other visible branding). Asked to describe what they saw, around 50 per cent of people immediately identified the picture as being a BP service station. 35 per cent of the remainder of respondents, when asked whether the picture suggested any brands, also named BP.

Nevertheless, the court found that the survey did not assist BP.

Although the survey showed that green was recognised as being part of BP’s colour scheme, in the full court’s view it did ‘not lead to the conclusion that green alone or green predominantly with other unspecified colours has been used as a trade mark.’

Also, in the service station shown in the picture used in the survey, the entire fascias of the buildings, petrol pumps and signage boards were coloured in green, which according to the full court contrasted with the trade mark applications—which only required that green be the ‘predominant’ colour used.

This meant, in the full court’s view, that the survey evidence was directed at a different trade mark from that in fact applied for.

There may be some room for debate about whether BP’s application, properly construed, included colours other than green (the use of the word ‘predominantly’ arguably acknowledged only that other colours, not being part of the claimed trade mark, might also have appeared on the relevant ‘stimulus’). And the survey evidence arguably supported the conclusion that, so far as the average consumer is concerned, the colour green in and of itself had trade mark significance in respect of the relevant services.

Be that as it may, the broader lessons of the full court’s decision must be carefully heeded. These include:

• the importance of clearly and unambiguously describing the colour mark
• the need to carefully think through any amendments during prosecution
• the need to tie the supporting evidence to the precise mark that is applied for.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.