Component element of get-up is registrable

Australia

In BP plc v Woolworths Limited, the Federal Court of Australia has allowed British company BP plc to register as a trademark a specific shade of green used as part of its overall get-up.

BP uses the green colour Pantone 348C in its get-up. It made various applications in Australia to register this colour as a trademark in two classes connected with its petrol station business. The mark was successfully opposed in proceedings before the trademark registrar and BP appealed to the Federal Court.

The main issue for the court was the fact that BP's get-up consists of more than just the colour green; it also comprises a shield, the letters 'BP' and the colour yellow. Green is the dominant corporate colour but is only one aspect of its overall brand. Could one aspect of that brand be registered as a trademark?

This issue has arisen before in the United States but it appears that there is no authority in Australia nor in the United Kingdom. From the relevant US cases, the Federal Court extracted and applied the following three principles:

  • Separate components of a single get-up or design may qualify for registration as a mark. They will be capable of registration if each feature considered separately distinguishes the goods or services in question.

  • If the get-up or design creates "a separate and distinct commercial impression" then the separate parts will not be registrable.

  • Registration will be allowed if the component creates an impression that is totally separate from the others and is distinctive, that is, it performs the trademark function of identifying the source of the goods and services to customers.

The court found that customers identified BP's petrol stations by the colour green alone, independently of the shield and the letters 'BP', because:

  • BP is the only company that uses green as the predominant colour in relation to the get-up for service stations;

  • BP has made extensive use of the colour green in its get-up since as early as 1956 when green was adopted as one of BP's corporate colours in Australia; and

  • the colour green has featured prominently in the company's advertising.

Thus, while the court held that BP's green colour was not inherently distinctive of BP's goods and services, it had, however, acquired distinctiveness and acted as a badge of origin. When the applications were filed in 1991 and 1995 respectively, the colour green Pantone 348C had therefore become distinctive of BP's goods and services in the classes for which registration had been sought. Accordingly, the court allowed registration.

It should be noted that this decision was issued by a single judge of the Federal Court, and there is no word yet as to whether it will be appealed. As it currently stands, however, this judgment opens the door to more applications for trademarks based on single, but dominant, aspects of a company's branding that are inherently distinctive or have acquired distinctiveness.

Julian Gyngell, Clayton Utz, Sydney

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