BP's green colour mark is rejected

The Australian Trademarks Office has, after much delay, finally rejected BP plc’s application for the colour green filed in 2002 (Application No 909518 in Classes 4, 37 and 43). The delegate of the registrar of trademarks held that, while consumers may ‘associate’ the colour green with BP, the evidence and the various contexts in which the mark had been applied by BP did not demonstrate that the mark as applied for had been used by BP as a trademark.

The delay was a result of BP’s prolonged fight with Woolworths in relation to BP’s other trademark applications for the colour green, in which Woolworths was successful (Woolworths Limited v BP plc ([2006] FCAFC 132)). The Full Court’s decision required the delegate to revoke acceptance of the application for the mark. As a result, the mark’s journey through the office began again in 2010 and, once again, acceptance of the mark was objected to on the basis that the mark was not distinctive - that is, it was not to any extent inherently adapted to distinguish BP’s goods or services from those of other traders (under Section 41(6) of the Trademarks Act 1995 (Cth), now Section 41(3) of the act post April 15 2013).

The delegate’s decision highlights one key matter: to overcome a Section 41(3) objection, particularly where the mark is a single colour, the applicant must produce evidence of use of that mark as a trademark that shows that, as at the priority date, the mark had acquired distinctiveness. The delegate’s decision also highlights that a mere ‘association’ between a mark and a trader evidenced by consumer survey results is not sufficient in and of itself to prove acquired distinctiveness.  

The delegate held that the mark was not inherently adapted to distinguish BP’s goods or services from other traders' goods or services, unless BP could produce evidence of acquired distinctiveness. Irrespective of the fact that BP specifically nominated not green per se, but Pantone shade 348C, the delegate stated that, with respect to single colour marks in particular, there was real likelihood that other traders may wish to use that colour and the consequence of registration would prevent any other trader in the goods or services from using not only that colour, but any shade that was deceptively similar to that colour. As was the case in the Full Court, the delegate then held that BP’s evidence did not show that the mark had acquired distinctiveness in fact. This was because BP’s evidence rarely showed that it used the mark as a trademark, rather it used the colours green and yellow. The delegate acknowledged that it was clear that it was BP’s intention for the mark to function as a trademark, but stated that “a subjective intention to use a sign as a trademark is not probative of the objective fact of use of it as a trademark use”.

As to BP’s consumer survey evidence, it showed that 85% of respondents referred to BP when they were showed a computer generated image of a service station where elements of it were coloured green. Yet again consistent with the Full Court’s decision, the delegate held that an ‘association’, in and of itself, was not sufficient to establish that the mark had acquired the secondary meaning of distinguishing BP’s goods or services from goods or services from those of other traders. BP’s consumer survey evidence only showed that consumers associated green with BP, it did not go so far as to prove that BP had been using the mark as a trademark or that it had thereby itself acquired distinctiveness as at the priority date.

Although the delegate’s decision goes no further than reiterating the Full Court’s findings, it does reinforce principals fundamental to Australian trademark law - namely, no matter how distinctive a mark is in fact, the applicant will not overcome a Section 41(3) objection if it cannot produce evidence that it had used the applied for mark as a trademark before the priority date. Such evidence must also show that what is distinctive is the mark as applied for, not another (similar) mark that the applicant otherwise used.

Lauren Gore and Stephen Stern, Corrs Chambers Westgarth, Melbourne