BP's green colour mark applications run out of gas
The subject applications were both amended twice during the course of their prosecution before the Australian Trademarks Office. In BP's first application, its trademark was initially described as "limited to the colour green as shown in the representation attached to the application form". In the second application, the trademark was initially described as "the colour green applied to exterior surfaces of the premises [service stations] as exemplified in the representation attached to the application".
The description of the trademark in both applications was first amended to the effect that the mark was the colour GREEN "applied to a significant proportion of the exterior surface of the buildings, canopies [etc]" of service stations. The trademark descriptions were later further amended to the colour GREEN "applied as the predominant colour to the fascias of buildings" and other parts of service stations.
The Full Court found that the final amendments to both applications extended BP's rights and substantially altered the identity of the trademark. In contrast, it held that the first amendment to the applications confined the scope of the mark and did not affect their identity.
The Full Court took the view that the introduction of the word 'predominantly' in the final amendments to the applications extended the scope of the trademark contrary to Section 65(5) of the Trademarks Act 1995, such that the mark could consist of the colour green, applied as the predominant colour of the mark, along with one or more other colours.
The final amendment to the description of the mark was also held to affect substantially the identity of the mark, contrary to Section 65(2) of the act. In making this finding, the Full Court held that the identity of the mark could not be considered by reference to the graphic representation of the colour attached to the application alone - which had not been amended in BP's applications. Rather, it considered the mark's identity as a combination of the graphic representation and the additional words describing the trademark in the "endorsement".
In addition, the Full Court found that BP had failed to prove that the trademark, as described in the applications, had become sufficiently distinctive to satisfy the requirements of Section 41(6) of the act. The court emphasized that the only evidence relevant to the enquiry under Section 41(6) was evidence of use of the colour green in the manner described in the applications as a trademark before the relevant priority date.
The Full Court reviewed BP's evidence of use of the colour green and held that although BP had used a combination of green and yellow since the 1950s "as a means of distinguishing the BP brand", the evidence did not show that the colour green, alone, had been used as a trademark. The Full Court referred to a number of television advertisements, which it described as "limited exceptions", where green had been used alone on things such as an oil refinery pipe and a truck, noting that those uses were not on the particular items specified in the endorsements to the applications. The Full Court characterized as "meagre" BP's evidence of references to BP's "new green stations" and calls to consumers to "stop at the green light" in print advertisements. It concluded that:
"the colours used to distinguish BP's goods and services from those of its competitors in the parts of the service stations referred to in the endorsements were its existing brand colours, green and yellow, with a marked and clear predominance of green."
The Full Court also considered BP's survey evidence, which it noted was professionally and competently done, but found that the survey results did not provide evidence that the trademark, as described in the applications, had been used to distinguish BP's goods and services before the priority dates. The Full Court held that the stimulus material shown to the survey respondents was flawed because the stimulus was an illustration of a service station which used green as the "only" colour of the relevant parts (such as the facia and bowsers), whereas the trademark applications described green as the "predominant" colour of each of the various parts - not the predominant colour of the service station as a whole. Thus, despite the fact that 85% of survey respondents associated the stimulus with BP and more than 40% of those people stated that their reason for holding such an association was that "green is the colour of the BP brand/trademark", the Full Court held that the survey results did not lead to a conclusion that green alone or green predominantly with other unspecified colours had been used by BP as a trademark.
Although the Full Court's decision may yet be appealed to the High Court of Australia, it emphasizes the need for traders in Australia to describe carefully their trademark in any application to register a single colour, giving particular thought to whether the trader has used as a trademark a single colour or a combination of colours.
It is highly likely that all applications for single colour trademarks will be assessed under Section 41(6) of the act. To achieve registration under that section, evidence will be required showing use of the trademark in precisely the manner it is described in any application. If survey evidence is to be used in support of such applications, the survey design should also give careful consideration to the description of the trademark being claimed in the application.
Further, if it is necessary to amend an application for a colour trademark, mark owners should give careful thought to whether a change to the wording of an endorsement will affect the identity of the mark or extend the scope of the mark.
Stephen M Stern, Corrs Chambers Westgarth, Melbourne
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