It’s Not Easy Trade Marking Green: BP's Latest Attempt Fails

Friday 4 July 2014 @ 10.29 a.m. | IP & Media

BP has lost another round in its extended fight to trade mark the colour green for its petrol stations and their associated food services and convenience stores.  A delegate of the Registrar of Trade Marks has rejected BP’s latest attempt to register a trade mark, following a string of court cases that included opposition from Woolworths.  According to The Guardian, BP has not said if they would continue to seek intellectual property rights over the colour, with a spokesperson saying only:

“The colour green has been central to the BP brand since the 1930s and we believe it should be protected.”

Colour trade marks are a fairly recent introduction into Australian intellectual property law, and there have been a number of attempts to trade mark particular colours for particular services, but so far Australian courts have applied tests quite strictly.  BP has succeeded in trade marking the colour green in Britain.

Past Proceedings

BP began attempting to trade mark a shade of the colour green as early as July 1991.  The trade mark was originally rejected after opposition from Woolworths, on the grounds that the mark was not inherently adapted to distinguish.  After some amendments to the specifications, the decision was reversed in the Federal Court by a 2004 decision of Finkelstein J (BP p.l.c. v Woolworths Limited [2004] FCA 1362), who concluded that although there was no inherent adaptation, the mark had acquired the “secondary” or “acquired” distinctiveness.  He came to this conclusion largely due to a survey conducted by Dr Bednall, a marketing expert from Monash University, who administered a survey in shopping centres that found that 47 per cent of people shown a picture of a service station coloured green (but with no other branding) said it suggested BP.

The trade mark was subsequently advertised as accepted in 2005 but was again opposed by Woolworths.  They also appealed the Federal Court decision to the Full Federal Court (Woolworths Limited v BP p.l.c. (No.2) [2006] FCAFC 132), who found that the amendments were not allowable under section 65 of the Trade Marks Act 1995 (Cth)("the Act").  The Full Federal Court also decided that the primary judge had attached too much significance to the Bednall survey and had applied the incorrect tests when considering the extent of distinctiveness required.  This decision led to the trade mark once more being revoked in 2010.  BP re-applied with different wording, this time limiting to the trade mark to “to the colour GREEN shown in the representation on the application form, being Pantone shade 348C”.

Decision

The latest decision by a delegate of the Registrar of Trade Marks rejected BP’s amended application.  Although it is clear that a colour may be registered under section 6 of the Act, the delegate cited [at 21] the original Finkelstein J decision, which said:

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 emanates from a particular source.

The delegate found that BP’s change from claiming “green” generally to a specific shade of the colour green (Pantone shade 348C) made  “little (if any) difference to the original determination”, as Philmac Pty Limited v The Registrar of Trade Marks [2002] FCA 1551 establishes that registering a colour as a trade mark carries with it the problem that using other shades of that colour might be found to be “deceptively similar”  [at 24].

The delegate found that BP had clearly intended the Trade Mark to “function as a badge of origin in Australia”, but that “a subjective intention to use a sign as a trade mark is not probative of the objective fact of use of it as a trade mark use [at 34].”  He rejected the evidence of the Bednall survey, agreeing with the Full Federal Court decision and concluding:

“I find that the ‘association’ between the colour green and the Applicant is present (or, more accurately, it was at the time of the survey), but an association alone is not sufficient to establish that the Trade Mark has acquired the secondary meaning of distinguishing the Applicant’s goods and services.”

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