BP P.l.c

[2014] ATMO 59

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade Mark Application number 909518 (4, 37, 43) - COLOUR GREEN- in the name of BP p.l.c.

Delegate:	Heath Wilson
Representation:	Decision on the Written Record
Decision:	2014 ATMO 59 Section 33 of the Trade Marks Act 1995 – section 41(6) – Evidence does not establish the trade mark is capable of distinguishing – application rejected.

Background

1. BP p.l.c (‘the Applicant’) applied, on 15 April 2002, for the registration of a shade of green as a trade mark the current details of which are:

Endorsement: The trade mark is limited to the colour GREEN shown in the representation on the application form, being Pantone shade 348C.

(‘the Trade Mark’)

1. The current designated goods and services of the Trade Mark are:

   Class 4:

   Fuels (including petrol) provided through vehicle service stations

   
   
   Class 37:

   Vehicle service stations (refuelling and maintenance); vehicle service station services including vehicle lubrication, maintenance, cleaning and repair, vehicle anti-rust treatment, vehicle wash and vehicle tyre fitting and repair

   
   Class 43: Take-away food services; provision of food and drink; snack-bars and cafes; all in convenience stores located on-site at vehicle service stations

2. The history of this matter is a lengthy one. In 2002, the Trade Mark was examined under the provisions of section 31 of the Trade Marks Act 1995 (‘the Act’) and a ground for rejection under section 41 was raised by the examiner on the basis that the Trade Mark had no inherent adaptation to distinguish the designated goods and services.

3. At that time, the application form described the Trade Mark in the following way: “This is a colour mark. The trade mark is limited to the colour green shown in the representation on the application form.” That description was reflected in the original endorsement.

4. At the beginning of October 2004 the Applicant filed evidence to support acceptance. On 27 October 2004 the judgment in BP p.l.c. v Woolworths Limited[1] was handed down whereby Finkelstein J found that the colour green used as a trade mark in a particular manner had come to distinguish specific goods and services. In accordance with that finding, the Trade Mark was accepted for the same goods and services as those in the court proceeding and the endorsement for the Trade Mark was amended during examination to read:

   The trade mark consists of the colour GREEN as shown in the representation on the application form, applied as the predominant colour to the fascias of buildings, petrol pumps and signage boards used in service station complexes.

   [1] [2004] FCA 1362; (2004) 212 ALR 79; (2004) 62 IPR 545; [2004] AIPC 92-036; [2005] ALMD 2079 at [17-18].

5. The Trade Mark was subsequently advertised as accepted under the provisions of s 41(6) for possible registration in the Australian Official Journal of Trade Marks on 13 January 2005.

6. On 12 April 2005, registration of the Trade Mark was opposed by Woolworths Limited. After multiple extensions of time and a suspension of the opposition proceedings, the evidence stages for the opposition commenced.

7. In the meantime, the Federal Court decision of Finkelstein J was appealed to the Full Bench of the Federal Court of Australia leading to the decision in Woolworths Limited v BP p.l.c. (No.2) [2006] FCAFC 132. The Full Bench held that the changes to the original descriptions of the trade marks being considered were not allowable under section 65 of the Act.

8. Upon the Applicant’s request to consider revoking acceptance of the Trade Mark (and in light of the court’s decision), the Registrar was of the view that the abovementioned amendment to the endorsement of the Trade Mark was also contrary to section 65. On 20 August 2010, acceptance of the Trade Mark was revoked under section 38(1) of the Act and the description of the Trade Mark reverted to:

   The trade mark is limited to the colour green shown in the representation on the application form.

9. The Trade Mark was re-examined and the ground for rejection under section 41(6) of the Act was reinstated. At the Applicant’s request, the description of the Trade Mark was subsequently amended to the current wording, being:

   The trade mark is limited to the colour GREEN shown in the representation on the application form, being Pantone shade 348C.

10. After a number of requests for deferment of acceptance had been allowed, on 25 February 2014 the Applicant requested that the application be decided on the basis of the material comprising the written record. I was allocated this matter as a delegate of the Registrar of Trade Marks. After some initial clarification, the material that comprises the written record for the Trade Mark is as follows:

• The statutory declaration of David Bednall dated 28 October 2003 with exhibit DHBB-1. (‘Bednall declaration’).

• The statutory declaration of Suzanne Broe dated 7 October 2004 with exhibits SCB-1 to SCB-10 (‘Broe 1’).

• The statutory declaration of Fiona Brittain dated 1 June 2010 with exhibits FMB-3 to FMB-10 (‘Brittain 1’).

• The statutory declaration of Suzanne Broe dated 2 June 2010 with exhibit SCB-11 (‘Broe 2’).

• The statutory declaration of Fiona Brittain dated 20 May 2011 with exhibit FMB-11 (‘Brittain 2’).

1. I note that some of the latter declarations were originally filed for the purpose of the aborted opposition. In any event, I will now proceed to decide the matter on all the above mentioned material. The reasons for my decision follow.

Reasons

Section 41

1. The Trade Mark consists of the colour GREEN (specifically Pantone® shade 348C) applied in relation to fuel products and services provided at vehicle service stations (including take-away food services). Whether or not a trade mark is inherently adapted to distinguish its particular goods and services is ordinarily assessed as at the date of the application[2] (in this instance, 15 April 2002).

   [2] Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5.

2. At the time the application for the Trade Mark was filed in 2002 (well before any amendments were made to the particular section in April of 2013) section 41 of the Act provided:

41 Trade mark not distinguishing applicant’s goods or services

(1)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:For applicant and predecessor in title see section 6.

Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:For goods of a person and services of a person see section 6.

(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)the Registrar is to consider whether, because of the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

Note 1:For goods of a person and services of a person see section 6.

Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

(6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)  the time of production of goods or of the rendering of services.

Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

1. In considering the ground for rejection under section 41 in relation to the Trade Mark, I am mindful of the fact that almost identical issues (including much of the evidence provided) has already been considered and analysed elsewhere, whether it be by the Full Federal Court in Woolworths Ltd v BP PLC (No 2) [2006] FCAFC 132 (and the decision at first instance before Finkelstein J) or by the hearing officer in the more recent decision of Woolworths Limited v BP PLC [2013] ATMO 61.

2. In the latter decision, all of the evidence currently before me was considered by the hearing officer in relation to the Applicant’s trade mark application no. 1016694 being “a green striplight (neon, LED or similar) affixed to the edge of the canopy over the petrol pumps at vehicle service stations as shown in the representation attached to the application form.” That application was in relation to goods and services in classes 4, 35, 37 and 43. It was ultimately determined, despite the provision of the evidence, that trade mark 1016694 was not capable of distinguishing the Applicant’s goods and services under the provision of section 41(6) of the Act.

3. Unlike the trade mark in that decision, the Trade Mark is a single colour generally applied in relation to similar designated goods and services and has an earlier filing date. One further point of difference is that the specification of the Trade Mark does not include any services in class 35. As the Trade Mark is not restricted to any particular use on the designated goods and services, the scope of the application is potentially broader than trade mark no. 1016644. It is not, for example, a single colour limited in application to the connecting inserts and split rings of polypipe fittings[3] or to a striplight on a service station canopy and petrol pumps (although it may encompass that latter application).

   [3] See Philmac Pty Limited v The Registrar of Trade Marks [2002] FCA 1551.

4. Turning to the question of whether the Trade Mark has any inherent adaptation to distinguish the designated goods and services I refer to the often reproduced comments of Kitto J in Clark Equipment Co v Registrar of Trade Marks[4]:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

   [4] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513–14; [1965] ALR 344 at 345–6, per Kitto J.

5. The Act makes it clear that colours (including single colours) used in relation to goods/services may be registered as trade marks. Section 6 of the Act provides the definition of a sign:

   sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

6. Furthermore, it is accepted that the assessment of a colour trade mark under section 41 should be no different from the assessment of any other trade mark.[5]

   [5] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; (2002) 122 FCR 494 at [146] per Stone J

7. In BP p.l.c. v Woolworths Limited[6] Finkelstein J found (at first instance) that three applications for “the colour green” (being trade mark nos. 559837, 559838 and 559839) were not inherently distinctive and further commented that single colour trade marks could never be inherently distinctive, but could only be protected by evidence of acquired distinctiveness. He then stated, specifically in relation to the colour green, that:

   Whichever test is applied the colour green (in the particular shade shown on the applications) is not inherently distinctive of BP’s goods and services. Applying the negative test, green is not inherently distinctive because, as I will soon show, it is a colour used quite innocently by other owners and operators of service stations. The colour is not inherently distinctive according to the positive test because the colour is simply descriptive. The marks will only be distinctive of them if, by the filing date of each application, the colour had acquired a secondary meaning.

   …

   Most objects have to be some colour. So merely applying a colour to a product will not act as an identifier for that product. In deciding whether colour functions as a trade mark it is necessary to determine whether the trader has used the colour in a way that informs the public that the product emanates from a particular source. Put another way, colour must be used to distinguish products and not as mere ornamentation or decoration. [7]

   [6] BP p.l.c. v Woolworths Limited [2004] FCA 1362; (2004) 212 ALR 79; (2004) 62 IPR 545; [2004] AIPC 92-036; [2005] ALMD 2079 at [17-18].

   [7] BP p.l.c. v Woolworths Limited (supra) at [23-24].

8. While the Federal Court in Woolworths Ltd v BP plc(No 2) overturned the primary judge’s finding in relation to whether the Applicant’s evidence was sufficient to distinguish the Applicant’s goods and services under section 41(6) - in relation to the initial determination (i.e. its inherent adaptation to distinguish), it said:

   There was no issue in appeal about the correctness of the primary judge’s view that the colour green was not inherently adapted to distinguish the designated goods and services for the purposes of s 41(3) and (5) of the Act. Thus, the only issue was the application of s 41(6). [8]

   [8] Woolworths Ltd v BP plc (No 2) [2006] FCAFC 132; 154 FCR 97; 235 ALR 698; (2006) 70 IPR 25; [2006] AIPC 92-224 at [68].

9. In Woolworths Limited v BP PLC, the Hearing Officer found[9]:

   The point is simply, in the words of subsection 41(6), that a green striplight affixed to the canopy of a service station is not, to any extent, inherently adapted to distinguish one trader’s goods or services from those of any other trader. Something as ubiquitous, utilitarian and decorative as a coloured striplight on a shopfront could never be otherwise.  

   [9] Woolworths Limited v BP PLC [2013] ATMO 61 at [26].

10. In the current matter, I do not have the benefit of any written submissions from the Applicant apart from arguments that have already been considered (and responded to) during the examination stages. In that regard, I note that the Applicant’s response to the sixth examiner’s report argued that the Trade Mark was not the colour GREEN per se but a specific shade of the colour green (namely Pantone® shade 348C). I find that fact makes little (if any) difference to the initial determination because:

    [T]he consequence of a grant of registration would be to prevent any other trader in goods of the same description from using not only that shade of terracotta [or green] specifically described and visually represented in the application in respect of the goods to which the application relates, but all other shades of colour that might be described as deceptively similar to that colour. That conclusion, in my judgment, is relevant to the legitimate or honest use test set out in Clark Equipment. [10] (My addition in bold)

    [10] Philmac Pty Limited v The Registrar of Trade Marks [2002] FCA 1551 at [60].

1. I do not intend to revisit the legal authorities in any further detail as they have been more than adequately addressed in previous decisions. At this point, I find that the Trade Mark is not to any extent inherently adapted to distinguish the designated goods and services. I therefore find it appropriate to consider, under section 41(6)(a) of the Act, whether the Trade Mark did distinguish the designated goods and services from those of other traders at the filing date of the application. 

Evidence submitted under section 41(6):

‘Broe 1’

1. The statutory declaration of Suzanne Broe dated 7 October 2004 with exhibits SCB-1 to SCB-10 contains evidence of the history of the Applicant and use of the colour green in relation to the designated goods and services.

2. Exhibit SCB-1 to Broe 1 is the statutory declaration of Robert Hadfield (Head of Trade Marks of the Applicant) dated 25 January 2002. Mr Hadfield highlights the history of the Applicant’s previous Australian trade mark applications. In Australia, it is beyond doubt that the Applicant initially adopted green and yellow as its corporate colours in (or around) the 1960s. It was an element of the Applicant’s trade dress, which also consisted of the recognisable ‘BP Shield device’. The Applicant’s green and yellow BP shield device was later replaced in 2000 by a Helios (or sun device) logo in green, yellow and white. As Mr Hadfield is based in London, the references within his evidence are mainly to use of the colour green from an international perspective. Accordingly, much of the evidence has limited relevance in demonstrating whether the Trade Mark distinguished the designated goods and services in Australia at the relevant time. 

3. Exhibit SCB-2 is the affidavit of John Anthony Perry (Consultant in oil retail marketing and former employee of the Applicant) also dated 25 January 2002. Mr Perry details the introduction of ‘Project Horizon’ which involved the worldwide re-imaging of all aspects of the Applicant’s business including the livery of the retail service stations. The particular shade of green (Pantone 348C) was selected at an early stage of the process and changes to the ‘BP Shield Device’ were adopted by the Applicant. Mr Perry further comments generally on the recognition of BP service stations by the colour green which became a predominant colour in the branding. The rebranding under Project Horizon was completed in Australia in 1991.

4. Exhibit SCB-3 comprises the statutory declaration of John McCrindle (National Retail Marketing Manager of BP Australia Pty Ltd) with exhibits. That statutory declaration also outlines the history and use of the colour green by the Applicant from the 1960s until around April 2002. The evidence includes documents such as the Applicant’s Retail Outlet Visual Standards Manual which had been distributed until 2001 (exhibit ‘JAMc-18’). The Visual Standards Manual is an internal document distributed to Senior Management, Planning Managers and the Applicant’s advertising agencies. As the Full Bench of the Federal Court noted, the examples of use in that manual all have a consistent use of green and yellow (or ‘gold’). I note that the other examples of advertising provided are dated from the late 1980s to the early 1990s. Closer to the filing date of the Trade Mark, the examples of advertising with an emphasis on the Trade Mark as a separate identifiable element are less common.  

5. In 2000, ‘Project Harmony’ was launched. The Project consisted of the adoption of the abovementioned BP Helios device and while two shades of green are major elements of the Helios device branding, the inclusion of white and yellow is also evident. Exhibits SCB-4 to SCB-6 to Broe 1 set out the launch of the new BP Helios insignia and subsequent changes to the branding on the Applicant’s service centres in or around 2000. The Applicant has also supplied examples of other service stations and fuel depots (at exhibit SCB-7) using colours other than green as part of their livery at the time of filing. However, that evidence does not assist in answering the question of whether the Applicant has accomplished the task of demonstrating that the Trade Mark distinguished its own goods and services from those of other traders in April 2002.

6. The Applicant’s general expenditure on advertising and promotion from 1993 to 2004 is, predictably, extremely high. These promotional activities included television advertisements, advertisements and articles in the press, magazines and point-of-sale materials. The sales figures in relation to the sale of motor fuels and lubricants are also considerable, as are the sales figures in relation to the designated services. All of those figures are claimed as confidential by the Applicant. Despite the high advertising and sales figures, they are not necessarily indicative of advertising and sales displaying the Trade Mark per se, but they are more often advertising and sales of the Applicant’s products and services bearing the BP logo (the shield or the Helios device) – a logo which is usually represented alongside green livery and also predominantly features the colour green (but also yellow/gold) as one of its elements.  

7. Finally, exhibit SCB-9 comprises the promotional materials of the Applicant from 1996 until 2004. Some of the material prominently features the colour green and other simply features the logo (the shield device or Helios) which consists of green (and yellow/gold) elements. In Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH[11] it was noted that:

   In most, if not all cases, the question whether there has been use as a trade mark will be determined by an objective examination of the use in the context in which it appears.

   [11] Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874 at [30].

8. I note that the colour green is a major element of most of the brochures in SCB-9; however, there are other uses apart from use in a trade mark sense within that evidence. For example, on the front of one of the green brochures the prominent tagline “Green on Environment. Gold on Performance” appears. In other brochures the colour green is used as a coding system to identify a particular fuel. An example of this is one of the Applicant’s brochures for “Premium unleaded with 10% ethanol” which appears green as opposed to the brochure for “Super Lead replacement” petrol where a red colour scheme is utilized. In British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, Jacob J said:

   I have already described the evidence used to support the original registration. It was really no more than evidence of use. Now it is all too easy to be beguiled by such evidence. There is an unspoken and illogical assumption that ‘use equals distinctiveness’.

9. It is clear that the Applicant’s intention was for the Trade Mark to function as a badge of origin in Australia and internal documents such as the Visual Standards Manual are supportive of that fact. However, a subjective intention to use a sign as a trade mark is not probative of the objective fact of use of it as a trade mark use.[12] The crucial point for section 41(6) in this matter is the perception of the Australian public and I turn now to the Bednall declaration on this point.

   [12] cf Wingate Marketing Pty Ltd v Levi Strauss & Co [1994] FCA 1001; (1994) 49 FCR 89 at 192B-C per Gummow J.

The Bednall Declaration

1. The declaration of David Hugh Bednall is dated 28 October 2003 and it annexes a report dated 27 February 2002 of a survey that was conducted over October/November 2001. The aim of the survey was to assess the Australian public’s perception of the Trade Mark.

2. The sample group for the survey was adults aged 19 and over and specific briefing instructions were prepared for interviewers based on responses given. The interviews took place in shopping centres in Australian capital cities and also in surrounding provincial areas. The interviewees were shown a computer-generated image of a service station with elements of it coloured green. Other identifying factors (such as logos) were removed. 85% of respondents referred to the Applicant when shown the image (some of those were prompted to state which trader it reminded them of). Mr Bednall was of the opinion that the results of the survey were demonstrative of a very strong association between the Trade Mark and the goods and services sold and supplied at the Applicant’s service stations.[13]

   [13] Bednall declaration at paragraph 3.

3. The survey results and the conclusions to be drawn from them were discussed in the judgment of the Federal Court at first instance[14] and also in the decision of the Full Federal Court where it was decided:[15]

   [I]t is hardly surprising that people shown this stimulus would associate the green service station with BP service stations which have been coloured with a predominant green and accompanying yellow. That association does not lead to the conclusion that the use of colour from 1989 has included use, as a trade mark, of either green alone, or green as the predominant colour accompanied by any other colour. The mere fact that consumers associate green with BP does not, in our view, satisfy the test of distinctiveness required by s 41(6).

   [14] BP p.l.c. v Woolworths Limited [2004] FCA 1362 at [55-61].

   [15] Woolworths Ltd v BP plc (No 2) [2006] FCAFC 132 at 117.

4. In the present matter the Trade Mark consists of a shade of green, without limitation as to its application. As a result, some of the Full Federal Court’s criticisms of the survey are not applicable to the matter before me. In addition, the survey was conducted before the filing date of the Trade Mark as opposed to the trade marks considered by the courts where the relevant filing dates were in 1991 and in 1995.

5. In the end, I find that the ‘association’ between the colour green and the Applicant is present (or, more accurately, it was at the time of the survey), but an association alone is not sufficient to establish that the Trade Mark has acquired the secondary meaning of distinguishing the Applicant’s goods and services.   

‘Brittain 1’, ‘Broe 2’ and ‘Brittain 2’

1. Brittain 1 is dated 2 June 2002 and, in answer to an argument posited in opposition that the colour green clearly had connotations of environmentalism, annexes examples of other meanings that exist for the colour green, including various dictionary definitions. The exhibits to Brittain 1 comprise the exhibits to the abovementioned affidavit of John McCrindle and declaration of Robert Hadfield. The exhibits to the Robert Hadfield declaration include the details of applications and registration for the colour green in other jurisdictions. Exhibits FMB-9 and FMB-10 contain examples of trade marks on the Register whose predominant feature is one or a number of colours.

2. I have also considered the contents of ‘Broe 2’. That declaration supplies updated sales/advertising figures from 2004 to 2009 and examples of evidence in relation to promotions and the number of the Applicant’s service stations around Australia. Ms Broe states that the majority of the annual expenditure on advertising relates to the publication – “The Green Guide”. The majority of this evidence occurs after the filing date of the Trade Mark and I cannot take it into account for the purposes of section 41(6) of the Act. ‘The Green Guide’, for example, is dated from 2008, as is all of the promotional material mentioned therein. While the Green Guide was distributed to retail service stations from 2002, the majority of that evidence occurs after the priority date of the Trade Mark and is information for the employees at the service stations rather than direct promotions to the Australian consumer.

3. Lastly, ‘Brittain 2’ is a declaration dated 20 May 2011 and exhibits (at FMB-11) examples of several trade mark registrations worldwide for the colour green (including the Green Strip Light trade mark). Taken out of context, the detail of those registrations is not evident. Are the circumstances analogous (i.e. the scope of the trade marks, their current status, the specific countries in which they are registered, the legal principles in those jurisdictions, and were they accepted after the provision of evidence)? In the absence of written submissions, I cannot (at face value alone) ascribe any meaningful conclusions to those examples that would affect the ultimate decision before me.

4. After assessing the Applicant’s evidence in its entirety, the question is whether Australian consumers merely recognize the colour green when it is applied in a specific context or whether they recognize it as operating as the badge of origin of a particular trader. Of all the evidence before me, the Broe 1 and the Bednall declaration are of greater assistance in answering that question. Those declarations contain the most relevant use of the Trade Mark at the appropriate time.

5. Notwithstanding a particular association in the public mind between the colour green and the Applicant’s service stations, I am not satisfied that the consumers would take any use of the Trade Mark in relation to all the designated goods and services as indicating those goods and services provided exclusively by the Applicant. In other words, I do not find the evidence and the various contexts in which the Trade Mark has been applied demonstrate that the Trade Mark if used alone distinguishes the goods and services. Despite the fact that I am considering a trade mark with a later priority date and a broader potential application than the trade marks considered in the court proceedings, I nevertheless find that the evidence fails to establish that the Trade Mark did distinguish the Applicant’s goods and services at the filing date as provided by s 41(6)(a). I find that the Trade Mark is not capable of distinguishing and accordingly must be rejected pursuant to s 41(2).

Decision

33  Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

1. I reject trade mark application no. 909518.

Heath Wilson
Hearing Officer
Trade Marks Hearings & Oppositions
17 June 2014