Australia: Update Colour Trade Marks – Court Update

The Australian Federal Court recently handed down a full court decision on BP’s trade mark applications for the colour green. This decision is significant as it is the first time that an appeal court in Australia has considered colour trade marks. The following update provides a brief summary of this decision.

The Australian Trade Marks Act 1995 (‘the TM Act’) provides for the registration of shapes, colours, sounds and scents, as well as more traditional trade marks such as words and logos. In fact, there are no limits to the types of trade marks that may be registered, provided that the mark satisfies the definition of a ‘trade mark’ (ie is a sign used, or intended to be used, to distinguish goods or services from the goods or services of other traders) and complies with the requirements of the TM Act.

There are now a significant number of registered shape marks in Australia and the number of registered colour and sound marks is also increasing. An example of a registered sound mark is McCain Foods’ registration for ‘AH McCAIN’ ... ‘PING’ ... ‘YOU’VE DONE IT AGAIN’. We do not yet have any registered scent marks but there have been some applications to register scents, including an application that is currently under examination for the smell of lemon in respect of cigarettes. An example of a scent mark that has been registered in the European Community is the smell of cut grass in respect of tennis balls.

These newer kinds of trade marks are proving a challenge for trade mark offices and courts around the world. On 4 September 2006, the Australian Federal Court handed down a full court decision on BP’s trade mark applications for the colour green.

The decision involved two trade mark applications lodged by BP for goods and services relating to petrol stations. The first application was filed over 15 years ago, in July 1991, and the second application was filed in October 1995. The Trade Marks Office (‘the Office’) raised objections in respect of both applications but the marks were eventually accepted for registration in July 1997. Woolworths opposed the registration of the marks and there was a hearing of the matter which resulted in a decision by the Office to refuse to register the marks. BP appealed this decision to the Federal Court and Justice Finkelstein ordered that the marks proceed to registration. Woolworths then appealed to the Full Federal Court. This update focuses on the decision of the Full Federal Court.

The descriptions of the trade marks were amended during the course of the applications but, at the time of acceptance, they were as follows:

• 559837 (classes 4 and 37) – The trade mark consists of the colour GREEN as shown in the representation on the application applied as the predominant colour to the fascias of buildings, petrol pumps, signage boards – including poster boards, pole signs and price boards – and spreaders, all used in service station complexes for sale of the goods and supply of the services covered by the registration (a green swatch was attached to the application).
• 676547 (class 42) – The trade mark consists of the colour GREEN applied as the predominant colour to the fascias of buildings, petrol pumps, signage boards – including poster boards, pole signs and price boards – and spreaders, all used in service station complexes for the supply of the services covered by the registration as exemplified in the representation attached to the application form (the representation is a sketch of a service station together with a convenience store and car wash).

A trade mark can be rejected (and opposed) on the basis, amongst other things, that it is not capable of distinguishing the applicant’s goods or services from the goods or services of other traders. The relevant section of the TM Act is s41. An application will be rejected on the basis of this section if other traders are likely, in the ordinary course of trade and without improper motive, to want to use the mark in connection with similar goods or services.

In considering this section, one of the following three conclusions can be reached:

• the mark may be considered inherently adapted to distinguish the goods and services in which case there will be no objection under this section;
• the mark may be considered to some extent inherently adapted to distinguish in which case s41(5) must be applied; or
• it may be considered that the mark is not to any extent inherently adapted to distinguish in which case s41(6) must be applied.

In the BP case, it was determined by the primary judge that the mark was not to any extent inherently capable of distinguishing the goods and services covered by BP’s applications and so s41(6) was applied. There was no issue on appeal about the correctness of the primary judge’s view on this issue.

Pursuant to s41(6), a trade mark which has no inherent adaptation to distinguish may be registered if it can be established that, because of the extent to which the applicant has used the trade mark before the filing date, the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

Justice Finkelstein held that the particular colour green was in fact distinctive of BP’s goods and services for the purposes of s41(6), even though BP used the colour in conjunction with other features such as the letters ‘BP’, the BP ‘shield’ and the colour yellow. His Honour found that BP was the only service station that used green as the predominant colour on its get-up when the applications were filed, that BP had made extensive use of the colour green in its get-up and that the colour had featured prominently in BP’s advertising. His Honour concluded that customers identified BP service stations by the colour green alone, independently of the other features of BP’s total ‘get-up’.

The Full Court considered that there were dangers in analysing the evidence and drawing conclusions by reference to the total get-up of BP’s service stations. The problem was that the evidence clearly showed that BP had used the colour green in ways, and as part of other trade marks, that did not actually correspond with the trade marks that were the subject of the applications. The Court emphasised that, for the purposes of section 41(6), the focus of the enquiry should be the use of the marks applied for, rather than use of colour as part of the get-up or packaging of goods generally.

The Court stated that it is important that the trade mark that is the subject of the application conforms with the trade mark that was used before the relevant filing date, because it is the extent to which that prior use has distinguished the designated goods or services which must be assessed. It is only where the extent of that prior use has had the consequence that the trade mark does distinguish the applicant’s designated goods or services that the trade mark will be taken to be distinctive for the purposes of s41(6).

The Court had no doubt that the colour green was an important part of BP’s get-up and that it was used as part of BP’s method of identifying and distinguishing its products and services. The Court did not, however, consider that BP had used the colour green separately as a trade mark as this colour was always used in conjunction with its ‘subsidiary, but ever present companion’, the colour yellow. The Court considered that, taking all of the evidence into account, there had not been any trade mark use of colour by BP other than green as the dominant colour in conjunction with yellow as the subsidiary colour. The Court was not swayed by the survey evidence tendered as the questions were directed to the use of green alone, which was not the subject of the applications. The Court concluded by noting that even if BP had established trade mark use of the colour green, the applications did not claim the use of green alone or the use of predominant green with yellow in any event. Instead the subsidiary colour(s) of the trade mark were unidentified.

The Full Federal Court also held that certain amendments that were made to the applications during the course of examination were contrary to the provisions of the TM Act and that the trade marks were consequently invalid on that basis.

Whilst BP has ultimately been unsuccessful in registering these particular colour marks, registering a colour mark is certainly achievable and may be a very effective marketing tool. Whether a colour mark, or any other trade mark, is registrable will always depend on the circumstances.

It is clear from the BP decision that, to satisfy s41(6), an applicant must establish:

(a) it has used the trade mark the subject of the application as a trade mark i.e. as a badge of origin, before the filing date; and

(b) that this use establishes that the trade mark does in fact distinguish the applicant’s goods and services from the goods and services of other traders – extensive evidence of use will be required.

Not all colour trade marks will be assessed under s41(6). Some colour trade marks may be considered ‘to some extent’ inherently adapted to distinguish in which case s41(5) will apply. Pursuant to s41(5), a trade mark which has some inherent adaptation to distinguish may be registered if it can be established that, because of the combined effect of the extent to which it is inherently adapted to distinguish, the use, or intended use, of the mark and any other circumstances, it can be shown that the trade mark does or will distinguish the applicant’s goods or services. It appears unlikely that a single colour trade mark will be considered inherently adapted to distinguish and accepted on that basis. A trade mark that consists of a combination of colours may be accepted on this basis, or examined under s41(5) rather than s41(6), but a single colour, especially a common colour, is more likely to be examined under s41(6).

This publication is intended as a first point of reference and should not be relied on as a substitute for professional advice. Specialist legal advice should always be sought in relation to any particular circumstances and no liability will be accepted for any losses incurred by those relying solely on this publication.