Leave to appeal to High Court rejected in green colour mark case

In BP plc v Woolworths Limited ([2007] HCATrans 249, May 25 2007), the High Court of Australia (Australia's final court of appeal) has refused BP plc's application for leave to appeal against the earlier decision of the Federal Court which had rejected BP's application to register as a trademark the colour green.

It was accepted by BP that a single colour cannot of itself be inherently adapted to distinguish its goods and services (for the purposes of Section 41(3) of the Trademarks Act 1995) and that the success of its application depended on it establishing factual distinctiveness acquired through use (Section 41(6) of the act). BP tendered evidence of acquired distinctiveness, but ultimately failed on the grounds that BP's use of the colour green did not function as a trademark.

Accordingly, the primary issue raised by BP was that the Federal Court had erred in finding that BP did not use the colour green as a trademark. The Federal Court had held that BP's colour green:

• was merely the predominant colour of the trademark that BP in fact applied to the fascias of its buildings, petrol pumps and other things;
  
  
• could not be dissected from BP's use of other colours, words and devices; and
  
  
• could not be considered on its own for the purpose of determining whether it functioned as a trademark.
  

BP argued that one should recognize hierarchies of trademarks, from umbrella marks to particular marks, which might all form part of its 'get-up'. In this case, BP argued that it had adopted a get-up which comprised a combination of marks and other signs: the green, which is the colour by which BP sought to be identified, the letters 'BP', which are in yellow, and a shield, which is also in yellow.

However, the High Court accepted Woolworths Limited's submission that the Full Court had not erred in finding that one could not dissect BP's get-up into its separate individual components. That finding was based on a question of fact, that is, on the evidence, it was not possible to disaggregate BP's multiple marks from its green background because there was no evidence of green being used as a trademark by itself. Thus, in other cases, it may be possible to show that a single colour is itself, alone, being used as a trademark and not simply as the colour of the trademark. This will, no doubt, be the submission of Cadbury Schweppes Pty Ltd if (or when) its application for the colour purple comes before the High Court.

By a two-to-one majority, the High Court was not persuaded that BP's submissions had sufficient prospects of success to warrant the grant of special leave to appeal from the Federal Court.

Julian Gyngell, Julian Gyngell, Wahroonga