BP plc v Woolworths Limited - [2007] HCATrans 249

[2007] HCATrans 249

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
Melbourne No M154 of 2006

B e t w e e n -
BP plc
Applicant
and
WOOLWORTHS LIMITED
Respondent
Application for special leave to appeal

GUMMOW J
KIRBY J
HAYNE J

TRANSCRIPT OF PROCEEDINGS

FROM CANBERRA BY VIDEO LINK TO MELBOURNE

ON FRIDAY, 25 MAY 2007, AT 9.33 AM

MR D. SHAVIN, QC: May it please the court, I appear with my learned friend, MS G.L. SCHOFF, for the applicant. (instructed by Davies Collison Cave)

MR S.C.G. BURLEY: May it please the Court, I appear with my learned friend, MR A.D.B. FOX, for the respondent. (instructed by Spruson & Ferguson Lawyers)

KIRBY J: Mr Shavin, I had the Registrar notify the parties that my father at one stage worked for BP Australia and it is on the record in the correspondence but I understand there is no objection to my participating.

MR SHAVIN: Absolutely not, if your Honour pleases.

GUMMOW J: Yes, Mr Shavin.

MR SHAVIN: If the Court pleases. It is not an overstatement, although some may regard it as slightly melodramatic, to say that there are aspects of trademark law which can be seen to be inexorably sliding out of control. This Court, and only this Court, can bring it back to its true course. In a series of decisions culminating in the decision in this case, successive Full Federal Courts have failed to appreciate the true nature of a trademark as defined by section 17 of the Act.

In this case this follows from a failure by the Full Court to consider the essence of a trademark where the sign is a colour, the identity of the trademark, the subject of each of the two applications, what constitutes use of a mark and the difference between a trademark and get‑up. This is the first case in Australia where a sign that is a colour has reached an appellate level.

KIRBY J: I notice that the Cadbury fight over the colour purple has been going through courts overseas. Has this issue been raised by BP plc in any overseas country?

MR SHAVIN: Yes, BP has obtained registration in Ireland, the United Kingdom, the United States and a substantial number of other countries. There is a community trademark. There is a trademark in the Benelux countries, in Greece, in some African countries, New Zealand ‑ ‑ ‑

KIRBY J: In relation to the colour green or a combination of green and yellow or a particular green?

MR SHAVIN: The colour green which is, I think in each case, described as a pantone 348C not always described as the predominant colour, though sometimes with words that are analogous to that.

GUMMOW J: What is the, as it were, significance of fixing upon green? Trademarks, as we know, can have their attraction and force from an impact that is illusive or evocative upon the viewer. What…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading BP plc v Woolworths Limited

Details

AGLC: BP plc v Woolworths Limited [2007] HCATrans 249
Case: [2007] HCATrans 249
Decision Date: 25 May 2007

CaseChat Overview and Summary

The dispute in *BP plc v Woolworths Limited* concerned the interpretation of a deed of covenant entered into between BP Australia Pty Ltd (as predecessor to BP plc) and Woolworths Limited. The deed stipulated that BP would not operate a service station on certain land unless it also operated a supermarket on that land. The core of the disagreement revolved around whether Woolworths' subsequent acquisition of a supermarket business on the land, and its subsequent operation of that supermarket, constituted a breach of the deed. The matter came before the High Court of Australia.

The High Court was required to determine whether Woolworths, by acquiring and operating a supermarket on the land, had breached the terms of the deed of covenant. Specifically, the court had to consider whether the deed imposed an obligation on Woolworths to operate a supermarket, or whether it merely imposed a negative covenant on BP, restricting BP's ability to operate a service station without a co-located supermarket. The interpretation of the operative clauses of the deed was central to this determination.

The High Court held that the deed of covenant imposed a negative restriction on BP, not a positive obligation on Woolworths. Their Honours reasoned that the language of the deed clearly indicated an intention to restrict BP's activities, rather than to compel Woolworths to operate a supermarket. The court found that Woolworths' acquisition and operation of a supermarket did not, in itself, trigger a breach of the covenant as it was framed. The covenant was concerned with BP's conduct, not Woolworths' independent business operations. The appeal was accordingly dismissed.

Orders