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BP plc v Woolworths Ltd

BP plc v Woolworths Ltd

Case [2004] FCA 1362 25 October 2004

Trade Mark Registration

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FEDERAL COURT OF AUSTRALIA
BP p.l.c. v Woolworths Limited [2004] FCA 1362
TRADE MARKS – appeal from Registrar – colour mark – construction of application – meaning of – colour not inherently distinctive – secondary meaning – divisibility of get-up to create separate marks
Patents, Designs and Trade Marks Act 1883 (UK) s 67
Trade Marks Act 1955 (Cth)
Trade Marks Act 1995 (Cth) ss 6, 17, 33, 38, 41, 65, 70, 240, 243
Trademark Act of 1946 (Lanham Act)
Trade Marks Registration Act 1875 (UK)
Trade Mark Regulations 1955 reg 7(2)
Trade Mark Regulations 1995 regs 4.2(b), 4.3(7)
Abercrombie & Fitch Company v Hunting World, Incorporated 537 F 2d 4 (2nd Cir 1976) discussed
American Basketball Association v AMF Voit, Inc and AMF Incorporated 358 F Supp 983 (1973) applied
Application of F. Reddaway & Co, Limited [1914] 1 Ch 856 cited
Applications by W. and G Du Cros Ld. for the Registration of Trade Mark’s, In the matter of (1913) 30 RPC 660 discussed
B & B Hardware, Inc., v Hargis Industries, Inc 252 F 3d 1010 (8^th Cir 2001) cited
Big O Tire Dealers Inc v The Goodyear Tire & Rubber Company, an Ohio Corporation 408 F Supp 1219 (DC Cir 1976); affirmed 561 F 2d 1365 (10^th Cir 1977) cited
Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 followed
Burger King Corporation v The Registrar of Trade Marks (1973) 128 CLR 417 applied
Campbell Soup Co. v Armour & Co. 81 F Supp 114 (1948) discussed
Chemical Dynamics, Inc., In re 839 F 2d 1569 (Fed. Cir 1988) applied
Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 applied
Dailey Pickle Co., In re 122 USPQ 340 (1959) applied
E J Brach & Sons, Application of 256 F 2d 325 (1958) applied
Esso Standard Oil Company, Application of 305 F 2d 495 (1962) applied
Gruner+ Jahr USA Publishing v Meredith Corporation 991 F 2d 1072 (2nd Cir 1993)
Hanson’s Trade-Mark, In re (1887) 37 ChD 112 discussed
Leopold Cassella & Co. Gesellschaft M.B.H, In re [1910] 2 Ch 240 applied
Levi Strauss & Co v Kimbyr Investments Ltd [1994] 1 NZLR 332 followed in part
Lomas v Winton Shire Council [2002] FCAFC 413 doubted
McGregor – Doniger Inc., In re 123 US PQ 49 (1959) applied
National Institute for Automotive Service Excellence, In re 218 USPQ 744 (1983) applied
Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816 not followed
Orange Personal Communications Services Ltd’s Application [1998] ETMR 337 referred to
Owens-Corning Fibreglass Corporation, In re 774 F 2d 1116 (Fed Cir, 1985) cited
Parke Davis and Company’s Trade Mark Application [1976] FSR 195 cited
Qualitex Co. v Jacobson Products Co., Inc 514 US 159 (1995) applied
Registrar of Trade Marks, The v Muller (1980) 144 CLR 37 cited
Schenectady Varnish Company, Application of 280 F 2d 1969 (1960) applied
Seabrooke Foods, Inc, v Bar-Well Foods Limited, In re 568 F 2d (1977) applied
Smith…

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 Ltd

Details

AGLC: BP plc v Woolworths Ltd [2004] FCA 1362
Case: [2004] FCA 1362
Decision Date: 25 OCTOBER 2004

CaseChat Overview and Summary

The Federal Court of Australia was asked to decide whether the applicant BP p.l.c. could register the colour green as a trade mark in respect of its goods and services. BP had made three applications for the registration of the colour green under the Trade Marks Act 1955 (Cth) and one application under the Trade Marks Act 1995 (Cth). The applications were opposed by Woolworths Limited, who argued that the applications were defective and that the colour green was not distinctive of BP's goods and services. The Registrar of Trade Marks refused to register the colour green as a trade mark and BP appealed to the Federal Court.

The main legal issues in the case were whether the applications were "defective" for having been amended contrary to s 65 of the Trade Marks Act 1995 (Cth) and whether the colour green was capable of distinguishing BP's goods and services as required by s 41 of the Trade Marks Act 1995 (Cth). The court found that the amendments to the applications were valid and that the colour green was distinctive of BP's goods and services.

The court considered the evidence of BP's expert witness, Dr Bednall, who conducted a survey in 2001 to determine the public's reaction to the colour green. The survey showed that 47 per cent of respondents said that the drawing of a service station suggested BP and 84 per cent mentioned the colour green as the reason. However, the survey was criticised by Professor Roberts, an expert in marketing, who argued that the survey had many prompts and that the drawing was biased towards BP's service station designs. The court found that the survey was reliable and that the colour green was distinctive of BP's goods and services.

The court also considered the evidence of other oil companies and non-oil companies that used the colour green in their get-up. The court found that each major oil company and non-oil company had adopted a get-up for its stations which was distinctive of that company's products. The court found that BP's get-up, with its predominant use of green, was a badge of origin.

The court concluded that the colour green in the shade depicted in the applications had acquired a secondary meaning and had become distinctive of BP's goods and services in the classes for which registration was sought when the applications were filed in 1991 and 1995 respectively. The court allowed the appeals, set aside the decisions of the Registrar, directed that the applications proceed to registration in the Register Book and ordered Woolworths to pay BP's costs both of the appeals and of the proceedings before the Registrar.

Orders