BP's 'green striplight' mark found to lack distinctiveness

In Woolworths Limited v BP plc ([2013] ATMO 61), a delegate of the registrar of trademarks has upheld an opposition by Woolworths Limited to an application by BP plc for a trademark described as a "green neon or LED striplight affixed to the edge of the canopy of petrol stations".

The delegate found that the mark did not distinguish BP's designated goods and services, and upheld the opposition under Section 41(6) of the Trademarks Act 1995 (Cth).

BP had filed a similar application in 1998, which an examiner found on the evidence submitted was not distinctive at its filing date, but was distinctive as at 2003. BP re-filed the application and it was accepted for registration in 2004. 

In the opposition, the delegate held that "something as ubiquitous, utilitarian and decorative as a coloured striplight on a shopfront" could never, to any extent, be inherently adapted to distinguish one trader's goods or services from another. The delegate noted that, as a neon or LED striplight, the green striplight mark was "conceptually different" to other pure colour marks and doubted that it should be considered to be a colour trademark. It was distinguished from a prior registration for a "pink glow" created by a row of pink coloured lights on a shopfront. Ultimately, without expressly concluding whether the "conceptual differences" affected the identity of the green striplight mark, the delegate treated it as a pure colour trademark, citing the criteria for colour marks listed in Philmac v The Registrar of Trademarks ((2002) 126 FCR 525). 

The delegate considered BP's evidence, which included survey evidence showing that 83% of respondents who associated the green striplight mark with a particular company associated it with BP, and evidence from truck drivers who said they identified BP's service stations when they saw the green striplight mark. The delegate found that BP's evidence was insufficient to show that BP used the green striplight mark as a trademark or that it was recognised by customers as a trademark. 

The delegate held that mere "association" of the green striplight mark with BP was not enough - more was required to show distinctiveness acquired through use as a trademark. The delegate asserted that BP's evidence was insufficient in three ways. First, BP's branding guidelines did not indicate that the green striplight mark was treated by BP as a trademark. Second, the delegate considered the mark's presence on less than 20% of BP-branded petrol stations to be insignificant. Third, the delegate found that BP took no steps to actively educate its customers that the green striplight mark was a trademark. 

The delegate's finding closely followed the Full Federal Court's decision in Woolworths Ltd v BP plc (No 2) ((2006) 154 FCR 97), which concerned BP's application for a green pure colour trademark. In that case, survey evidence showed 85% of respondents associated a green coloured petrol station with BP.

This decision underscores that registration of non-traditional and colour-related trademarks in Australia can be particularly challenging. In particular, the case illustrates the need for evidence of how the public has been educated to understand that a mark (which the Australian Trademarks Office prima facie regards as non-distinctive) is being used "as a trademark", even where survey or other evidence shows a high level of recognition of the mark.

If the decision is appealed, the Federal Court of Australia may consider whether earlier decisions made in respect of pure colour trademarks should be applied equally to trademarks which are not described as pure colour marks, such as the mark at issue here, or whether closer scrutiny should be given to the description of the green striplight mark in considering its distinctiveness.

Liam Nankervis and Lisa Ritson, Ashurst Australia, Melbourne and Sydney