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

Copyright in the High Court of Australia

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 is the idea here?

MR SHAVIN:   Both the court at first instance and the Full Court noted that in the oil industry there has been a traditional use by the major oil companies of colour as a means of distinguishing their service stations and their products.

GUMMOW J:   Yes, but why green?

MR SHAVIN:   Because it was chosen by BP as its colour.  It is not suggested, your Honour, that green is inherently adapted to distinguish.  It was found by his Honour at first instance ‑ ‑ ‑

GUMMOW J:   It might be inherently adapted to mislead, might it not?

MR SHAVIN:   No, your Honour.  In fact, in a contested matter in Ireland BP obtained the registration of green as a trademark.

GUMMOW J:   What is nature and healthy about the production or consumption of petroleum products?

MR SHAVIN:   To the consumer in the context of oil, your Honour, green indicates BP, not environmental friendliness.

KIRBY J:   It was a clever colour to have chosen so many years ago because it is now very much associated with the environmental movement.

MR SHAVIN:   Yes, and this preceded, of course, significantly, environmental awareness in this context.  The selection of the colour ‑ ‑ ‑

GUMMOW J:   We are talking about registration now, Mr Shavin.

MR SHAVIN:   We are indeed, though as of – the question is factual distinctiveness as of the date of application.  There are two applications.  One is dated 1991 and one is dated 1995 and your Honours will appreciate that the test under section 41(6) requires us to show factual distinctiveness as of the date of application.

GUMMOW J:   Yes.

KIRBY J:   Are the decisions in the overseas courts that you have mentioned final courts?  Have any of them gone to a final court of any country?

MR SHAVIN:   In Ireland it went to the Court of Appeal.

KIRBY J:   Was it challenged in the Supreme Court of Ireland or not?

MR SHAVIN:   I am not sure, your Honour.

GUMMOW J:   Anyhow, we had better get on with this case.

MR SHAVIN:   If I can just finally respond in Cadbury.  Cadbury is working through the courts.  It lost in the office.  It substantially won on an appeal in a hearing.  It has now gone to the Federal Court before Justice Sundberg and it is working its way through the interlocutory processes.  The matter that has been in the paper has been a trade practices case, not a trademarks case.

GUMMOW J:   Thank you.

MR SHAVIN:   The failure in the Federal Court was compounded by the refusal by the Full Court to appreciate that a trader may concurrently use more than one mark in its getup.  The Full Court refused to dissect the getup of BP into those separate marks.  Justice Finkelstein at first instance appreciated that he was confronted with getup with BP, that you had a green field, that on the green field there was other information in yellow, the letters “BP”, the yellow shield, and the Full Court recited that there was some information that appeared in yellow lettering.

So the question that his Honour Justice Finkelstein asked himself was, “If I have a getup with distinctive marks, is any part of them capable of acting as a trademark?”  He found that that was a question of fact.  If on the facts he could see that one of the elements of the getup in fact acted as a trademark, there was no obstacle to that element being registered as a trademark.  It was accepted at first instance, consistently with the approach in the United States in the Qualitex Case and in Europe, that a single colour cannot be inherently adapted to distinguish, and that is not challenged by BP.

It is clear that the registrability, therefore, of a sign consisting of a single colour falls to be considered under 41(6).  The essence of 41(6), however, is the use of the sign as a trademark and of course that means does the sign act to distinguish the goods or services of BP from those of other traders.  The Full Court, in our submission, fell into several errors in considering this.

GUMMOW J:   Show us the paragraph.

MR SHAVIN:   Yes, if the Court pleases.  There is more than one.  May I take the Court briefly?

GUMMOW J:   Yes, show us the best one.

MR SHAVIN:    The starting point upon which the other errors build is the understanding of what the words of the application meant that is not limited to this case because there are a significant number of applications in the Trademarks Office which use the same language.  That can be found in paragraph 120 in application book page 85.  The words of the applications as amended were the trademark consists of the colour green as shown in the representation on the application applied as the predominant colour.  The Full Court wrongly said that the applications are:

not for the use of the colour green alone as a trade mark, as the predominant colour of the service station.  They are for the use of the colour green as the predominant colour of the trade mark that is to be applied to the facias of buildings, petrol pumps etc.  This calls for, or implies within the available scope of the trade mark, the use of another (unspecified) colour or colours. 

That is an error of law that will affect every mark on which the Trademarks Office has required this language to be used because the trademark is clearly just the colour green.  As Justice Finkelstein found at first instance, the words “applied as the predominant colour” are words of limitation limiting the way in which the trademark can be used ‑ ‑ ‑

GUMMOW J:   This is paragraph 121, is it?

MR SHAVIN:   Paragraph 120, and then if one goes to 121, there are three grounds upon which the court held the primary judge fell into error.  The first appears at line 38:

we do not think that BP’s total image could be dissected so as to support these applications –

That is a matter that goes fundamentally to every application for a single colour mark because unless the mark is being applied to the product itself, the pipes as in Philmac, the bats as in Pink Bats, a colour mark will often be used in conjunction with other matter.

KIRBY J:   That MAS report, which is quoted by Justice Finkelstein, pointed out that the product itself is difficult to differentiate with the service and so on and, therefore, as between the competitors, the colour is quite important to mark them off and to attract people like bees to the honey pot.

MR SHAVIN:   Yes, and in fact the evidence here showed that, for example, if you are driving along the highway, the first way in which motorists can distinguish which service station they are going to is the colour that they see in the distance.

KIRBY J:   I was in Zambia a month ago and I saw the green colours of BP there, so it is everywhere.

MR SHAVIN:   It is everywhere.

HAYNE J:   But where do you articulate precisely the error to which you are pointing?  When I go to your draft notice of appeal I find lots of grounds ending with the wonderful expression, “wrong in law and contrary to the evidence and the weight of the evidence.”  Where do I find articulated precisely whether the error to which you say you have just taken us is the error upon which you would fasten.

MR SHAVIN:   If I could ask your Honour to turn to application book 129, paragraph 3:

The finding of the Full Court that the Appellant’s use of the colour green on its service station complexes:

a.       could not be dissected from its use of other colours, words and devices;

b.      could not be considered on its own for the purpose of determining whether it functioned as a trade mark;

was wrong in law and contrary to the evidence and the weight of the evidence.

We say as a matter of law it is possible to look at the getup and identify the getup can comprise a number of different trademarks.  It is our respectful submission that the Full Court wrongly equated getup and trademarks and suggested that you can only have the use of a single trademark.  Of course, one can have hierarchies of trademarks from umbrella marks to particular marks.  They might all form part of the getup.  In this case, BP has a getup which comprises a combination of marks and other signs.  The green, which is identified by the Full Court and by the evidence recited by the Full Court as the colour by which BP sought to be identified, the letters BP, which are in yellow, the shield, which is in yellow, they are each marks and the issue which the court held, wrongly, in our submission, against us was that you could not dissect that getup into its separate individual components and then assess whether those components (a) functioned as a mark and (b) has satisfied the threshold of section 41(6).

KIRBY J:   But the trouble is your claim was, on one view, over broad.  You could have, as it were, sought to make the point of the colours green and yellow or green and gold, instead you opted for green and then later, when you lost on that, you then tried to shift ground belatedly.  That came to nothing.  So the question is whether this is an appropriate vehicle for the Court to look at the single colour, Cadbury seems to be a much better case for that purpose if ever it comes here.

MR SHAVIN:   Though in Cadbury’s Case – and it is a matter with which I have a little knowledge – wherever purple is used you will find other trademarks, the glass and the half, the word “Cadbury.”

KIRBY J:   But BP is always green and yellow, green and gold.

MR SHAVIN:   Save as to this, if I could ask the Court to look at paragraph 118 of the judgment that appears at application book 84.  The results of the survey were quite astounding, in our respectful submission, “85 per cent of people associated the stimulus” which appeared only in green “with the BP brand”.

KIRBY J:   Yes, we live in the real world.  We know Shell is yellow or sort of an orangey colour and you are green and yellow.

MR SHAVIN:   But, with respect, your Honour, that answers the question.  It shows that green actually is a sign that distinguishes the goods and services of BP from those of other traders.  If you saw a new service station coloured in green, would you go past that service station coming at 80 kilometres an hour down the highway and think it was a BP service station?  If the answer to that is yes, and our respectful submission is that what has fallen from your Honour suggests it is, then BP is entitled to be protected by that with a registration for the colour.  That is why “colour” after trips has been included in the definition of signs in section 6.

KIRBY J:   You are claiming that the colour green, which is such an important colour for other purposes in this world nowadays, and the question is, is this the suitable case in which the Court ‑ ‑ ‑

MR SHAVIN:   With respect, we are not claiming all use of the colour green.  We are only claiming that use of the colour green which is used as a trademark.  There is an enormous distinction between use simpliciter and use as a trademark.  That is the difference really between section 10 in the UK Act and the provisions in our Act.  Under section 120 of our Act there is in infringement only if the sign is used as a trademark.  So the sign has to be used not as a method of decoration, not as a method of simply identifying something as environmentally friendly, but it has to be used as a means of distinguishing those services, or attempting to, from the goods and services of other persons.

KIRBY J:   What about the services of the political party Greens?

MR SHAVIN:   Then it would not be within the class, your Honour.  There is a limitation in two respects.  The first is that it is limited by reference to the classes of goods and services for which application has been made.  The second is that it is limited by reference to the need for the colour to be used as a mark and whenever colour is going to be registered as a mark, there will always be an obstacle confronting the trademark proprietor.  They are going to have to prove that the use is use as a mark.

GUMMOW J:   You have only got about 20 minutes, Mr Shavin.  You are rapidly using it up with side margins.  Is there any ground here based on section 43 of the Act?

MR SHAVIN:   No.

GUMMOW J:   Namely, there is a connotation which is something likely to deceive?

MR SHAVIN:   No.

GUMMOW J:   Your opponent itself uses green, does it not?

MR SHAVIN:   It is not contended that their use of green would constitute an infringement of the mark.

GUMMOW J:   They use green what?

MR SHAVIN:   They use green stripes.

GUMMOW J:   For their fresh food?  They also now sell petroleum products, do they not?

MR SHAVIN:   They do, and they use green stripes but in association with red lettering and white fields.  They do not use green as a predominant colour ‑ ‑ ‑

GUMMOW J:   They have got no interest in urging section 43 either.

MR SHAVIN:   No.

GUMMOW J:   Yes.

MR SHAVIN:   Section 43 has not been raised.  So our first ‑ ‑ ‑

GUMMOW J:   It is not beyond my mind when it comes to the question of whether we take on this case.

MR SHAVIN:   Yes.  Save that, your Honour, there is no suggestion in the material ‑ ‑ ‑

GUMMOW J:   Why should we get involved in what, in truth, is presented by the parties as a discrete and self‑contained problem but is in fact a wider one on one view of it?

MR SHAVIN:   Because if the Full Court decision stands, it may prevent other matters getting here because the way the Full Court has dealt with the survey, the way the Full Court has dealt with the construction of the mark ‑ ‑ ‑

GUMMOW J:   Bear in mind section 43 is not limited to use.....in the same class and so on and so forth.  What you were putting to Justice Kirby is wider.

MR SHAVIN:   Perhaps the practical answer, your Honour, is that in the survey response there was no significant response in the survey at all suggesting that people associated the green with an environmentally friendly station.  When you had an 85 per cent response rate, in our respectful submission, what that demonstrated is that there was enormous proportion of the community that looked at green in the context of service stations ‑ ‑ ‑

KIRBY J:   You have made that point.  Had you better not move on to your next point?

MR SHAVIN:   If the Court pleases.

KIRBY J:   Are you going to deal with the section 28 point?  Is that really being pressed?

MR SHAVIN:   It is a subsidiary point, your Honour.

KIRBY J:   It certainly is.

GUMMOW J:   No doubt it is.  That is not answering the judge’s question, if I may say so.

MR SHAVIN:   It is pressed but as a subsidiary point, your Honour.

KIRBY J:   Yes, all right.  You better get to your other big points.

MR SHAVIN:   Our first big point therefore was the point of construction.  The second major point was the question of dissection of the marks.

GUMMOW J:   Wait a minute.  Looking at page 129, as you were in response to Justice Hayne’s effort to chisel something out here, we had ground 3, you expounded that to us.  Ground 4, is that law as well, “must state to the ordinary person”?

MR SHAVIN:   Yes, in our respectful submission, as a proposition of law, it is a misstatement.

GUMMOW J:   Why?

MR SHAVIN:   The Full Court used it in the context of having an express statement.  There had to be an express teaching to the public that this is a trademark.  In our respectful submission, that is untenable.  What the evidence showed was that there was an advertising campaign which taught to the public ‑ ‑ ‑

GUMMOW J:   Did the Full Court actually say that?

MR SHAVIN:   Pardon?

GUMMOW J:   Did the Full Court actually say what you attribute to them?

MR SHAVIN:   Yes.

GUMMOW J:   Whereabouts?

MR SHAVIN:   They noted at 97 that there had been a teaching to the public, but the specific sentence at paragraph 102, the foot of application book 79 in the sentence starting at line 59:

For the conclusion to be drawn that green alone was being used by BP as a trade mark prior to 1991 or 1995, one must understand the material as stating to the ordinary person that green alone was being used as a badge of origin to distinguish ‑ ‑ ‑

GUMMOW J:   What is wrong with that?  I have said something like that myself.

MR SHAVIN:   Because in the context they are asking for a specific, an express statement.  In the context of the evidence it is quite clear that ‑ ‑ ‑

GUMMOW J:   It does not say that, “one must understand”.  Anyhow, so that is ground 4 and 5 looks like fact, going back to page 129, does it not, about the survey evidence in this particular case and 6 looks like fact as well.

MR SHAVIN:   Yes, and 9 is a question of law.  It goes to whether what constitutes a representation within the meaning of section 65(2).  The court took words of endorsement which they said went to the scope of the mark as constituting part of the representation under 65(2) rather than being another particular under section 65(5).  That goes directly to a question of law.  That affected, of course, the conclusion of the application of 65(2) in ground 10 and in ground 11.  The extension of rights goes to the question as to whether the word “predominant” used in this endorsement means that the trademark has moved from being for the colour green than for being for the colour green and other unspecified colours.  In our respectful submission, that is a question of law, and so you have the extension.  Then the question of power is raised under section 28.  The only question with that is whether the court implicitly found that section 85 enabled revocation of a mark and if that was the extent of section 85 it renders 88 otiose.

KIRBY J:   It would be an odd result if it did not.  It would be a very odd result.  Normally appellate courts pick up the powers, as we do, of the court below, so I would not waste a lot of time on that one.  Stick within the milieu of green.

GUMMOW J:   Yes, that is right.  Anything else you want to add?

MR SHAVIN:   No, if the Court pleases.

GUMMOW J:   Yes, Mr Burley.  What is this point about section 65, as you see it?

MR BURLEY:   Your Honour, section 65 concerns the proper construction of the marks within the specific context of section 65(2) and (5), the definition of “representation”.  We would, for the starting point, urge upon your Honours that the construction adopted by the Full Court was one which was available on the basis of the endorsements which appeared in the applications themselves.  As a result of that, and in particular ‑ ‑ ‑

GUMMOW J:   But what is section 65 doing?

MR BURLEY:   Section 65 operates as a ground of opposition via section 62(a) of the Act where the application may be opposed on the ground “that the application . . . was amended contrary to this Act”, and then section 65 picks up the circumstances in which an amendment might be made.

GUMMOW J:   What is the sense of it? Why are amendments being frowned on as distinct from fresh applications?

MR BURLEY:   Where the application starts off with one particular identity and then moves to being something broader or different to that which was the initial application, bearing in mind there is a priority question from the filing date ‑ ‑ ‑

GUMMOW J:   It goes to the question of priority, does it not?

MR BURLEY:   Yes, your Honour, that is how it is ‑ ‑ ‑

GUMMOW J:   It is just a practical ‑ ‑ ‑

MR BURLEY:   Yes, and in practical terms ‑ ‑ ‑

GUMMOW J:   You click onto your earlier priority but you change the substance.

MR BURLEY:   Yes, and that is what the Full Court found happened.  Initially it was an application for the colour green as identified by the representation of the colour green.  In one application there is a little square of green and in another a picture of a service station.  Then it shifted to the final version of the endorsement which was the application of the colour green as the predominant colour, thereby introducing the concept that it is not green alone but it is also green as the predominant colour with other colours and predominant having a concept of perhaps visual ascendancy would mean, typically here, perhaps yellow with green, but it could also mean black with green, white with green or multiple colours with green. 

One of the primary criticisms of the evidence that the Full Court made was that, yes, there had been evidence of trademark use of green as the predominant colour together with yellow but there was not evidence of green as the predominant colour with any other colours and there was not evidence of green being used as a trademark by itself.  That addresses one of the matters my learned friend raised which is whether there was any disaggregation by the Full Court.  In our respectful submission, this Full Court decision does not stand for the proposition that one cannot disaggregate multiple marks from a background.  Quite the contrary, their Honours found that green as a predominant colour with yellow was used as trademark even though all the evidence as to advertising and so forth showed that the letters BP and the shield and so forth were used in conjunction with it.  So there was that disaggregation done. 

In fact, the very passage that our learned friends referred your Honour to at paragraph 121 of the judgment, with respect, is completely consistent with that analysis.  Their Honours in criticising the learned primary judge said at paragraph 121 about line 33:

Given BP’s use of the colours green and yellow in its trade marks and in other ways, we do not think that BP’s total image could be dissected so as to support these applications in the manner suggested by the primary judge.

In other words, the words given demonstrate that on the evidence of this particular case the Full Court did not think it was appropriate.

KIRBY J:   It sounds like a factual refinding.I have to say to you, I am worried about all these cases overseas because one does not generally want to get out of step with what is happening unless there is some good reason in the statute to do so.Now, have you looked at the overseas cases?  Are they confined to the colour green or were they green with a combination of other colours?

MR BURLEY:   Your Honour, I cannot answer that.  I am not familiar with the ‑ ‑ ‑

KIRBY J:   We really ought to.  Normally when we get these cases – we had one of Phillips recently and we had to look at what was happening elsewhere.

MR BURLEY:   Yes, as my learned friend accepted in response to a question from your Honour that some of them were for the green per se.  Of course the history of this particular trademark application went, as I have submitted, from green to green as the predominant colour.  I cannot tell your Honour authoritatively that that particular history may well be unique to Australia but, in any event, of course, the danger of applying overseas authorities in relation to this is perhaps borne out by the approach that Justice Finkelstein had in this particular circumstance, whereby referring to overseas authorities, particularly in the United States, his Honour, in our respectful submission, was distracted from the question under section 41(6), which is what was the use of this mark, this particular mark, the words of the endorsement and the application in the context of the actual use of the trademark? 

If I could invite your Honours to turn to section 41(6).  The underlying rationale for this section is that in the earlier parts of section 41, section 41(2):

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 ‑ ‑ ‑

KIRBY J:   Mr Shavin has a point that when you are roaring along a highway at 100 kilometres an hour the thing you see is green as distinct from orangey yellow.

MR BURLEY:   Yes.  Your Honour, that approach might tend to distract from the actual question which is as to trademark use.

GUMMOW J:   There is another question really, whether you care whether it is BP or Shell, it is a petrol station.

MR BURLEY:   Yes, your Honour.

KIRBY J:   If you are running dry you do not care, but if you were not running dry you would generally stick with tried and trusted or you look at the price, because that does tend to come into it.

MR BURLEY:   Conclusively sometimes, your Honour.

GUMMOW J:   You look at the price which tends to be the same for reasons we will not go into.

KIRBY J:   You have got nothing to distinguish, your colour.

MR BURLEY:   Of course the price is often in yellow.

HAYNE J:   We will not go into the connotations of that.

MR BURLEY:   Your Honours, the importance of subsection (6) is that inherent adaptation to distinguish is where a trademark, in this case asserted to be the colour, is capable of itself of immediately connoting the source of origin of the goods.  Now, it is accepted in this case that it is not for many reasons.  Colour itself is used as a decorative thing or maybe descriptive.

KIRBY J:   That is not realistic though.  The markings and the getup are designed to distinguish BP stations.

MR BURLEY:   With respect, that is what we accept.  The markings and the getup, but the colour per se is what our friends contend the trademark is for.  So that is why it is not so much simply to say there is an association with the colour green, and that is what the survey evidence demonstrated, an association with the colour green.  It has to be used in a particular context as indicating a source of origin.  In this context, in our respectful submission, section 41(6) is very particular about the criteria that need to be satisfied. 

The first of those is that the applicant has established that because of the extent to which the applicant has used the trademark – and this is why we draw attention again to the particular words in the endorsement and in the graphic depiction – that is why their Honours in the Full Court, with respect, correctly, in our submission, went into some considerable detail about what was the actual evidence of use of the trademark.  They looked at the advertisements.  Your Honours have seen from the annexures A through to Q also that after a rigorous analysis of the evidence before them they were able to conclude that there was in fact no use of the colour green by itself, “other than green as the dominant colour in conjunction with yellow”.  That finding is at application book 80, paragraph 106.  So that was the use of the mark as a trademark in the context of the evidence. 

Our learned friend’s submissions as to the survey, which is another point on the disaggregation application question, rise no higher than the question of an association as opposed to the use.  In our submission, the survey is really a derivative source of evidence that cannot rise higher than the evidence of actual use given through evidence of the promotions and the television advertisements and the application on or in relation to the services which is the test under section 7 of the Act.

KIRBY J:   I am really surprised, I must confess, having sat in a few of these applications in this area, that neither side is really putting before us what has happened in the overseas jurisdictions.  In a sense I think it is against the applicant because if it were the case that in the overseas jurisdictions they had secured trademarks for the colour green, as far as I am concerned, in a global economy that would be a very significant consideration and it has not been put before us.

MR BURLEY:   Yes, your Honour.  Your Honour, in terms of the construction of the trademarks we have made our submissions.  Our learned friends and we differ.  The Full Court found as a matter of construction of the trademarks that this is not a mark for the colour green alone.  In our respectful submission, a lot of our learned friend’s submissions fall away in that context.  The question of the construction of the words in the applications themselves is one which we would submit is a question of fact based on what the applications actually state.  So your Honours will see the endorsements themselves on page 49 of the application book at paragraph 7 after there being the depiction of the green square:

“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 –

and so forth ‑ ‑ ‑

KIRBY J:   In fact, common experience tells you that BP has moved away from the shield to the sun, has it not?

MR BURLEY:   The starburst and so forth, yes.  We are crystallised for current purposes to the filing dates of 1991 and 1995.

KIRBY J:   The sun is a gold or yellow sun?

MR BURLEY:   There is a starburst of some sort with multiple colours.

GUMMOW J:   They may have rights under.....section 52 of the Trade Practices Act upon their present devices, I suppose, but this is locked back some 15 years ago.

MR BURLEY:   Yes, your Honour, frozen as often we are in intellectual property matters in a time bubble of some considerable time after the actual events.  The reason why I address attention to the particular use of the words in the application is, of course, that it is those words which, quite rightly, section 41(6) directs attention to in the analysis of whether or not there has been trademark use in all of those matters.  One important aspect of that is that in assessing the validity of the trademark application one has regard not just to one particular use within the scope of that application but to all available uses within the application, which is why I submitted earlier that it is not only green and yellow but also green and any other colour where green is the predominant colour.

GUMMOW J:   This word “predominant”, how have adjectives like that got into measuring the metes and bounds of these monopolies?

MR BURLEY:   Your Honour, in our submission, that is one of the major problems for the applicant because of the difficulty in construing that.  The applicant complains that, how would they ever establish distinctiveness in fact given that range of colours?  The answer to that is a bit like in a patent case, these are the words of the applicant’s own choosing in one way or another and if they chose to try and cover a very broad field with multiple colours and multiple potentials, then the corollary of that is that it will be harder for them to establish validity of that particular broad application.

GUMMOW J:   It is rather hard to conduct a survey too.

MR BURLEY:   Yes, your Honour.  In our submission, there is nothing in the Full Court decision that gainsays the utility of a survey if appropriately directed to a particular trademark.

GUMMOW J:   Was the survey evidence evidence that directed the minds of the people giving it to the situation to them as it appeared in 1991?

MR BURLEY:   There was an issue initially about whether or not it was telescoping because it was conducted some considerable time after the events.  That was not a primary criticism ultimately on the appeal.

GUMMOW J:   All right.  Do not take time with it now.

MR BURLEY:   Thank you, your Honour.  The survey itself is dealt with in the Full Court’s decision at appeal book 81 and following.  The observation about the stimulation is to be seen at appeal book 82, paragraph 115, where the Full Court observed that:

It is important to recognise that the stimulus contained a use of green different from that claimed in the applications.  Green was not used as the predominant colour on the fascias of the buildings, petrol pumps, signage boards – including poster boards, pole signs and price boards – and spreaders.  It was used as the only colour.  Dr Bednall said in cross‑examination that, as he understood the trade mark application, it was for green alone.  Dr Bednall accepted that at some point another colour used as a branding colour may neutralise the use of green as an identifier of BP.

That, of course, is linked up inextricably with the concept of the proper construction of the trademark application.  So where there was evidence ‑ ‑ ‑

GUMMOW J:   Dr Bednall had supervised the survey, had he?

MR BURLEY:   Yes, your Honour.  He was the expert who conducted it and ultimately it is the conclusions which were the subject of the attack.

GUMMOW J:   Did he frame the survey as well?

MR BURLEY:   I think he was involved in the preparation and conduct of it, your Honour.  That is at 107.  My learned friend says he did not conduct it, he supervised it.

GUMMOW J:   I am sure he did not stand on street corners.

MR BURLEY:   So, your Honour, the finding of the survey that there was an association between green and BP did not go so far as was necessary to establish, as our friends would have it, that there was a connection in a course of trade between green as a trademark per se and BP service stations. The observation that the association does not lead to the conclusion that the use of the colour from 1989 has included use as a trademark of either green alone or green as a ‑ ‑ ‑

KIRBY J:   We are not looking at it in the trade or in the business of pharmaceuticals.  We are looking at in the business of petroleum products and they do tend to have this limited number of distinctive colours.

MR BURLEY:   Yes, your Honour.

KIRBY J:   It is a natural marketing thing, I would think.

MR BURLEY:   And again the Full Court is not gainsaying that proposition.  It recites it as part of the background, but it says you have got to look at what was actually used and not take a derivative conclusion from the survey evidence.  The fact that people recognise that green is used for BP does not mean it is the badge of origin or it is a badge or origin for it.  Green and yellow was always promoted as the badge of origin and it is not apposite to separate out the conclusions of the survey and say that is, in effect, the boot strapping of the marketing evidence which points all in one direction with one limited exception towards the use of green and yellow.  The limited exception is identified at paragraph 105, appeal book 80 where at 48 or so the Full Court says:

Green, alone, was not used as a trade mark in the parts of the service stations referred to in the endorsements.  BP stressed, however, the educative role of that part of the advertising which stressed green – that told the reader of the “Green BP stations” and to “stop at the green light”.  But even if it be assumed that there was some trade mark use of green alone in the particular print advertisements to which we have referred, the evidence is inadequate to elevate that to the point where it establishes the matters referred to in s 41(6).

In our respectful submission, that is a plain finding of fact which does not contravene a principle of law applicable in these circumstances.  Your Honours, our learned friend in his oral submissions referred to the paragraphs in the draft notice of appeal.  If I could address those briefly.  At application book 129, paragraph 3, it is asserted that;

The finding of the Full Court that the Appellant’s use of the colour green on its service station complexes:

a.could not be dissected from its use of other colours, words and devices –

In our respectful submission, there was no finding as a matter of principle that they could not be dissected where appropriate.  In fact, there was some dissection, as I have submitted, of green and yellow.  But in those particular circumstances it was not apposite to separate out green because it had not been used separately as a mark:

b.could not be considered on its own for the purpose of determining whether it functioned as a trade mark –

Again, in our respectful submission, that is tied up in the construction of the trademark as it is read with the endorsement which led to a conclusion to that effect.  In our respectful submission, there was no error of law identified in paragraph 4 where it was found unexceptionally by the Full Court that the applicant’s material must communicate that the use of the mark in question, leaving aside the dispute as to whether the mark is for green alone, “was being used as a badge of origin”.  In our respectful submission, that is a necessary test, not whether it is being used descriptively or in another sense.  In our respectful submission, most of the other criticisms of the Full Court’s decision really lie in questions of fact, findings as to the survey and so forth, which were open to the Full Court. 

Insofar as the section 65 question is concerned, in our respectful submission, section 65 operates as a way, as I submitted earlier, of identifying whether or not a trademark as applied for has changed in its nature or scope.  The necessary ascertaining of what the nature and scope of the trademark is involves an understanding of what the picture is read together with the endorsement.  That, in fact, was accepted by our friends on a general level at application book 65, paragraph 56 where the Full Court recorded, and we do not understand this to be challenged:

It was common ground between Woolworths and BP that the visual depiction of the colour and the endorsement together demonstrate the nature of the trade mark in each case and thus define the scope of the rights claimed.

My friend says that is challenged, but that was recorded.

GUMMOW J:   You fix upon the phrase “together demonstrate”?

MR BURLEY: Yes, your Honour. To ascertain the rights conferred under the trademark, section 20 of the Trade Marks Act provides for the rights conferred on the owner of a trademark being exclusive rights:

(a)to use the trademark; and

(b) to authorise other persons to use the trade mark;

in relation to the goods and/or services in respect of which the trademark is registered. 

It is, in our submission, unexceptionable that it would be a combination of both the visual depiction and the words themselves which assist in the identification of what that mark is.  The discrete issue under section 65, as we understand our friend’s argument, is that in section 65(2) there is a reference to “An amendment may be made to the representation of the trade mark” and the point of disagreement was whether the representation meant only the picture in the case of the second mark or the little green square in the case of the first, or if it meant those depictions together with the words. 

The Full Court, after a very careful analysis of the legislation including the policy and purposes behind it, found that of course it must mean the representation construed as a whole, both the visual aspects as well as the descriptive.  The starting point of that construction was looking up the dictionary and seeing what “representation” meant.  The common usage of the word included graphic as well textual references of description.  If that was correct, in our respectful submission, then the findings of fact that followed as a result of the amendment of the endorsements follow necessarily.  If that were not the case, then section 65(5) would pick up the same proposition because it says, “An amendment may be made to any other particular specified”.  So if it is not a representation, then, in our submission, it is any other particular and the question then is whether there has been, in effect, an extending of the rights around it.  In our submission, for the reasons advanced before, the change from use of green to use of green as the predominant colour, et cetera, was an extension because necessarily there is a broader scope of potentials.

GUMMOW J:   The red light is on, Mr Burley.

MR BURLEY:   I am sorry. 

GUMMOW J:   Was there anything else?

MR BURLEY:   Only to say the question of the power of the Court, which I think is the final ‑ ‑ ‑

GUMMOW J:   We do not need to hear you on that.

MR BURLEY:   May it please the Court.

GUMMOW J:   Yes, Mr Shavin.

MR SHAVIN:   There are four matters, if I might respond to the Court in this way.  First, in respect to your Honour Justice Kirby, evidence of all the foreign registrations was before the court both at first instance and on appeal.  In the United Kingdom the registration is, “The mark consists of the colour green pantone 348C as applied to a significant proportion of the exterior surface of the buildings, canopies, poles, signs, and other component parts of service stations used for the sale or supply of the goods and services covered by the registration.”  The language in different countries was different but the markers registered ‑ ‑ ‑

GUMMOW J:   Their statutes are different too, I imagine.

MR SHAVIN:   They are, but his Honour asked the question I was seeking to respond.  The colour green alone is registered in Benelux, France, New Zealand, Andorra, Azerbaijan, community trade mark in France, Germany, Guernsey, Indonesia, Jersey, Poland, Portugal, Singapore, Spain, Switzerland, Turkmenistan, the UK, Hong Kong, Fiji, Malaysia, Mozambique, Philippines, Ukraine and the United States of America.  So there is a very significant international portfolio of registrations.

KIRBY J:   Not the colour green alone.  It is the colour green predominantly.

MR SHAVIN:   It is either alone or is predominant.  If I could deal with that as my second point.

GUMMOW J:   Significant, I think, was one phrase, was it not, significant in some countries?

MR SHAVIN:   Significant in some countries.  A similar word in the Cadbury application is a substantial portion of the packaging.  In our respectful submission, our learned friends and, with the greatest of respect, the Full Court have completely misunderstood that use of the word “predominant.”  It does not mean that the trademark is green and any other unspecified colour.  It simply is that the trademark is the colour green, but it cannot be used on a small part, that there is a physical limitation.  As the court said in paragraph 56 of its decisions, the question of predominance goes to scope, not identity and that is where the court fell into error with respect to the amendment and their validity. 

If, in fact, the identity of the mark is the colour green but uses predominant portion, et cetera, goes to the scope, that is another particular under 65.  If in fact it is a matter going to limitation that it limits you, you must be a predominant as opposed to a smaller proportion of the other areas that have to be coloured, then it does not extend the scope, so it does not contravene 65.  So, with respect, the judge at first instance was correct.  That error infects the survey.  Because the court failed to identify the mark as the colour green with a scope, the court failed to appreciate that the survey demonstrated that the colour green had a certain significance and, as Dr Bednall was recorded by the Full Court in paragraph 109 as saying, he said:

Thus the results strongly suggest the extensive use of green, as shown in the annexed picture, does distinguish and has for a long period of time (ten (10) years or more) distinguished, BP from other brands, for the vast majority of consumers.

So that when one understands properly the nature of the mark is green with a scope limitation to predominance, then the failure by the Full Court to permit dissection is critical.  It goes to all other colour marks because ‑ ‑ ‑

KIRBY J:   I understand all that, but we are on notice that the Cadbury colour purple is wending its way and may end up here.  Why would it not be more appropriate to wait until that case comes, because at least in that case counsel have not yet shifted their ground at the last minute to try and embrace a couple of colours?

MR SHAVIN:   There are other problems with colour as to whether or not there was 16 swatches initially and then there was 8 and there is a question as to whether that amendment is caught up by the same analysis that the Full Court used in BP and that is being raised as a substantial issue.

GUMMOW J:   Which side are you on?

MR SHAVIN:   Cadbury.

KIRBY J:   But the fact that special leave was refused in this case would govern the outcome of a decision in the Cadbury Case.

MR SHAVIN:   But, with respect, the guidance that this Court could give as to the proper approach to colour marks, as to the proper approach to dissection, as to the proper approach to section 65 is a matter that will influence not only Cadbury.  There is an Australia Post application for yellow that falls into exactly the same category.  We, with respect, if I can say this, have not shifted ground, your Honour.  The Trademarks Office imposed the limitation on us.  Now, yes it was said below, well, we could have appealed the Trademarks Office, but in the real world if you are negotiating an application through the office and the office says we want to put a limitation in there so that you have a colour green but it has got to be limited to a predominant use, that is not a shifting of ground or an

extension.  It is a contraction.  That sort of thing happens in the vast majority of these sorts of applications.

GUMMOW J:   What was the thinking, as far as you understand it, of the office imposing that requirement?

MR SHAVIN:   Because they wanted to make clear that there could not be arguments as to whether an incidental use of green was a trademark use.  They wanted to confine any claim to trademark signification to where there was a predominant use.  They saw it as a confining and restriction.  The approach taken by the Full Court at the urging of our learned friends was simply not something that was within the discourse with the office.  May it please the Court.

GUMMOW J:   We will take a short adjournment.

AT 10.25 AM SHORT ADJOURNMENT

UPON RESUMING AT 10.32 AM:

GUMMOW J:   What I am about to say represents the views of Justice Hayne and myself.  Many of the issues which the applicant seeks to agitate on appeal to this Court present issues of fact, the resolution of which would raise no point suitable for the grant of special leave.

To the extent that the applicant seeks to assert that the Full Court made errors of law in the construction of provisions of the Trade Marks Act 1995 (Cth), we are not persuaded that these contentions enjoy sufficient prospects of success to warrant a grant of special leave. We would refuse special leave with costs.

KIRBY J:   I would grant special leave, but only in those matters arising under the Trade Marks Act, not those concerning the powers of the Full Court of the Federal Court of Australia.

GUMMOW J:   The order is special leave refused with costs.

AT 10.33 AM THE MATTER WAS CONCLUDED