No easy path to colour registration in Australia
Woolworths Limited v BP p.l.c.  FCAFC 132, Full Federal Court of Australia, Heerey, Allsop & Young JJ
The Full Bench of the Federal Court of Australia issued a very important decision on 4 September 2006 in relation to colour marks. The marks of concern are two Australian trade mark registrations owned by BP p.l.c. ("BP") with a view to protecting the colour GREEN as applied to service stations and service station equipment . The corresponding applications had a complex history. The applications were accepted by the Australian Trade Marks Office on the basis that the marks had acquired distinctive character at the date of application. However, Woolworths Limited successfully opposed the applications on the basis that the marks lacked capacity to distinguish. BP appealed the decision to the Federal Court of Australia before Finkelstein J who allowed the applications on the basis of acquired distinctive character through use. Now on appeal before the Full Bench of the Federal Court the applications may be refused yet again on the basis that amendments to the applications were not made in accordance with the Trade Marks Act 1995 ("the Act") and that the evidence did not demonstrate use of the mark which was the subject of the applications.
The Applications in Question
On 17 July 1991, BP filed three applications for goods and services in international classes 1, 4 & 37 consisting of a green square of colour. As was the practice in Australia at that time, the applications were endorsed as follows:
"The trade mark is limited to the colour GREEN as shown in the representation attached to the application form".
BP applied to consolidate the three applications under application number 559837 on 17 July 1997 following the introduction of multi class applications. BP sought an amendment to the endorsement of the consolidated application as follows in compliance with new regulations regarding colour marks:
"The trade mark consists of the colour GREEN as shown in the representation on the application as applied to a significant proportion of the exterior surface of the buildings, canopies, pole signs and other component parts of service stations used for the sale of the goods and the supply of the services covered by the registration".
At the request of the Australian Trade Marks Office, on 30 October 1997, BP applied to re-amend the endorsement as follows:
"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".
On 25 October 1995 BP filed a second application which was accorded application No. 676547 and which extended to services in class 42. The application consisted of a sketch of a service station together with a convenience store and a carwash in the background. The representation in the application is below:
The second application was endorsed to reflect the colour appearing in the mark as follows:
"The mark consists of the colour GREEN applied to the exterior surfaces of the premises used for the supply of the said services as exemplified in the representation attached to the application. ".
In July 1997 the endorsement of this application was amended to the following:
"The trade mark consists of the colour GREEN applied to a significant proportion of the surface of the buildings, canopies, pole signs and other component parts of services stations used for the supply of the services covered by the registration, as exemplified in the representation attached to the application form."
Finally, once again at the request of the Australian Trade Marks Office, in October 1997 the endorsement of the second application was amended again to the following:
"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."
Use of the colour GREEN by BP and its competitors
BP submitted significant evidence of use with a view to establishing that the company held rights in the colour GREEN in relation to the designated goods and services. BP's evidence showed that the colour GREEN was first used by BP in its GREEN and YELLOW logo mark as early as 1923 in the United Kingdom ("UK"). When BP entered the Australian market in 1954 it began aggressive promotion of its brands. In the late 1950's BP standardised its image of its service stations which involved a design incorporating the colours WHITE, YELLOW, GREEN and RED. The colours GREEN and YELLOW were, however, predominant colours from the early 1960's through to the late 1980's.
In 1989 BP commenced "Project Horizon" which instituted strict guidelines on the use of colour on BP service stations. The guidelines required the colour GREEN (pantone 348C) to be the predominant colour to be applied to BP service stations worldwide. The worldwide budget for the Project Horizon was US$500 million with approximately US$92 million being spent in Australia on the project.
In June 1996, Woolworths entered the Australian retail petrol market and by December 1998 operated 83 service stations. Woolworths applied a combination of the colours RED, GREEN and WHITE to the get up of their petrol stations. The canopy of the Woolworths petrol station was painted GREEN with the words "WOOLWORTHS" and " PETROL" painted in WHITE. The paypoint in the petrol station on the premises was also painted GREEN.
Other players in the Australian petrol market also used the colour GREEN. 7-Eleven, which set up service stations in Australia as early as 1977, used the colours ORANGE, GREEN and RED on a WHITE background on its service stations. Caltex, which had operated in Australia since 1941, commenced a new colour scheme in 1989 adopting a dark GREEN colour in its CALTEX logo mark and on the get-up of its petrol stations.
Amendments to the Applications
Woolworths opposed the registration of BP's marks firstly on the basis that the applications had been amended in a fashion which substantially affected the identity of the marks and broadened the ambit of the registration (contrary to subsections 65(2) and (5) of the Act). The Full Court in this decision has given us substantial guidance on the operation of section 65 of the Act.
Sub-section 65(2) of the Act requires that any amendment made to the representation of a trade mark must not substantially affect the identity of the trade mark as at the time when the particulars of the application were published. Publication of the particulars of an Australian application typically occurs 1 2 days after filing. Sub-section 65(5) requires that any amendment to the application must not expand the scope of the registration.
Consideration in this decision was given to the meaning of the word "representation" in the construction of sub-section 65(2). It was held that the ordinary meaning of the word "representation" is not confined to the pictures or diagrams which might be appended to the application. The word representation is taken to be defined by its ordinary English interpretation which means that the representation of a trade mark application for the purposes of registration may comprise both a picture or diagram along with a textural description or explanation which is intended to be read together. After considerable examination of the relevant provisions it was held that amendments to endorsements or descriptive statements against any application may affect the identity of the trade mark which is the subject of the application even when no change is made to the pictorial representation of the trade mark.
Woolworths contended that the first application constituted a GREEN coloured device mark in the form of a square rather than a colour mark. Therefore, Woolworths alleged that the first amendment to the endorsement changed the identity of the trade mark application as it changed the application from a device mark to a colour mark. The Judges were, however, satisfied that the joint operation of the pictorial representation of the original trade mark application combined with the endorsement resulted in the application being likely to be understood by the ordinary consumer as an application to protect the colour GREEN.
Although Woolworth's assertions above were rejected, both amendments to the application were held to substantially affect the identity of the mark. After the first amendment the identity of the mark changed from the colour GREEN as applied to the goods and services of the application to the colour GREEN as applied to a significant proportion of the exterior surfaces of a service station. The second amendment introduced the notion of GREEN being the predominant colour applied to service stations and other equipment used in service stations. Both amendments were found to change the identity of the mark contrary to section 65(2) of the Act.
In consideration of whether the amendments expanded the scope of the registration it was held that the first amendment to the application did not extend, but rather limited the scope of the registration. However, the second amendment was held to have expanded the scope of the registration as the colour GREEN would no longer be applied as the only colour on particular surfaces of a service station, but rather as the predominant colour, which implies that one or more other colours would also be applied to the service station as well. The second amendment to the colour endorsement was therefore found to expand the scope of the registration and be contrary to sub-section 65(5) of the Act.
The Judges went on to consider whether the amendments to the second application contravened subsections 65(2) and/or (5) of the Act. The first amendment was found not to offend either provision on the basis that the diagram did not show colour on all surfaces of the relevant premises. However, the second amendment was found to substantially affect the identity of the trade mark and expand the scope of a registration as the colour GREEN was again to be only the predominant colour applied to the surfaces shown in the representation which implies that other colours would also be applied. Therefore, the second amendment contravened sub sections 65(2) and (5).
Using a colour mark to acquire distinctive character
Woolworths also challenged whether BP had used their marks such that they had acquired distinctive character before the date of filing the applications for the purposes of subsection 41(6) of the Act, which applies to marks which are not inherently adapted to distinguish the designated goods and services. In determining whether the two marks had acquired distinctive character before their date of filing, the Court divided the matter into two discrete parts. The first question to be answered is whether the use of the colour marks in the manner described in the application constituted use of the marks as trade marks, which underpins the operation of the Act. The second issue is whether the colour marks used in relation to the goods and services of the applications did in fact distinguish the goods and services of the applicant at the dates of filing.
In considering these issues, the Judges held that in assessing the evidence only use which conformed with the applications before the filing date was relevant. It was also necessary to consider whether the use was sufficient to distinguish the goods and services as being those of the applicant. If the evidence did not show this then the applications must be rejected.
The Judges were critical of the decision of Finkelstein J at first instance before the Federal Court in directing his attention to the get-up applied to service stations by the applicant rather than by reference to use of the marks in question. They took the view that much of the use shown in the evidence submitted did not correspond with the applications.
Evidence of Use
The Judges found that the change brought about by Project Horizon in 1989 resulted in GREEN predominating the colour scheme of the service station, but was at all times used with YELLOW as the subsidiary, but ever present companion. BP's advertising (which stressed green) was found to be inadequate to establish the requisite degree of distinctiveness for the colour for similar reasons. Taking all the evidence into account, the Court was unable to conclude that the trade mark use of the colour GREEN at the relevant dates was as anything other than as a dominant colour with YELLOW as the subsidiary colour.
The decision in favour of BP rendered by Finkelstein J. at first instance relied heavily on survey results. While the Full Court determined that the survey was professionally and competently conducted, the decision shows how sceptical the Australian courts can be of survey evidence. The results of the survey showed some 85% of people associated the colour GREEN as applied to a picture of a service station with the BP brand. Although a very high association between the colour GREEN and the service stations of BP was obvious the, Judges considered that this did not lead to a conclusion that GREEN alone or GREEN used predominantly actually distinguished the goods and services of BP. The survey was found to only show that consumers would associate the colour GREEN with BP and nothing more.
The validity of the survey evidence was also questionable in the view of the Judges on the basis that the survey evidence needed to show use of the trade mark applications before the filing date. This was further complicated by the fact that the survey was designed to assess whether GREEN alone operated to distinguish the goods and services of the applications. However, it is not clear from the decision which version of the marks, before or after amendment, was considered to be the application against which the evidence was being assessed as the Judges did not explain this point.
The granting of relief is complicated by the fact that Woolworths had not sought a stay of the decision of the Federal Court at first instance. The applications had proceeded to registration in the absence of Woolworths seeking a stay. The Full Court concluded that as the Trial Judge had erred in directing that the applications proceed to registration on that basis that there was an error in the Register which should be rectified. The Judges were satisfied that they had power to rectify that error by the making of appropriate orders for cancellation or removal of the registrations.
BP argued that the granting of such orders should be refused as a matter of discretion as the registration of the marks transferred the nature of the proceedings to that akin to rectification, rather than an opposition proceeding. Therefore, the granting of an order for rectification of the Register would be unjust and prejudicial to BP. This submission was rejected, the maintenance of the integrity of the Register being found to outweigh any possible prejudice to BP.
To date, orders putting the aforementioned reasons into effect have not yet been made by the Full Court.
Davies Collison Cave Law represented BP in the Court proceedings.