Woolworths Limited v BP P.l.c
[2013] ATMO 61
•8 August 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Woolworths Limited to registration of trade mark application 1016694 (4, 35, 37, 43) – CO: GREEN STRIPLIGHT AFFIXED TO EDGE OF CANOPY OF PETROL STATION - filed in the name of BP p.l.c.
| Delegate: | Claudia Murray |
| Representation: | Opponent: Mr David Catterns, QC, assisted by Ms Gabriella Rubagotti of Counsel and instructed by Mr John Afaras of Spruson and Ferguson, Sydney. Applicant: Mr David Shavin, QC and Mr Edward Heerey of Counsel, instructed by Ms Fiona Brittain of Davies Collison Cave, Melbourne. |
| Decision: | 2013 ATMO 61 Section 52 opposition – section 41 – trade mark not capable of distinguishing under subsection 41(6) - opposition successful – registration refused – costs awarded against applicant. |
Background
BP p.l.c. (‘BP’ or ‘the applicant’) filed trade mark application number 1016694 (‘the Green Striplight trade mark’) on 19 August 2004, for the trade mark identified in the application as a ‘colour’ trade mark and described in the following endorsement:
The trade mark is 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.
The representation attached to the application form appears as follows:
The application was filed in classes 4, 35, 37 and 43 of the International (Nice) Classification of Goods and Services. After minor modification, the specification now reads:
Class 4: Fuels
Class 35: Retail of fuels, oils, greases and lubricants, automotive products and accessories, household and convenience items, toiletries and groceries; all the foregoing provided by service stations or by convenience stores located on-site at service stations
Class 37: Vehicle fuelling and refuelling services; vehicle service station services including vehicle lubrication, maintenance, cleaning and repair, anti-rust treatment, vehicle tyre fitting and repair and vehicle wash
Class 43: Take-away food services; provision of food and drink; snack- bars and cafes; all the foregoing provided by convenience stores located on-site at vehicle service stations
Grounds for rejection under the Trade Marks Act 1995 (‘the Act’) in terms of subsection 41(6) and section 44 were raised against the application during examination. However, at the second report, for reasons that I will address in more detail later, the examiner withdrew both grounds and the application was advertised accepted for possible registration in the Australian Official Journal of Trade Marks on 16 December 2004, subject to the following endorsement:
Provisions of subsection 41(6) applied.
On 15 March 2005, Woolworths Limited (‘Woolworths’ or ‘the opponent’) filed notice of opposition to registration of the trade mark. Five grounds of opposition were listed in the notice.
There were various extensions of time requested during the evidence stages, as well as extended suspension periods while the final outcomes of Federal Court proceedings, and then an unsuccessful application by BP for leave to appeal to the High Court in relation to its two related ‘colour green’ trade marks, were awaited. Then, matters were further delayed while a round of also ultimately unsuccessful settlement negotiations took place between the parties. After the formal evidence stages concluded, further evidence was served and filed by BP. Eventually, I heard the matter, as a delegate of the Registrar of Trade Marks, in Canberra, on 7 May 2013. Mr David Shavin, QC, assisted by Mr Edward Heerey of Counsel and instructed by Ms Fiona Brittain of Davies Collison Cave, Melbourne, represented the applicant. Mr David Catterns, QC, assisted by Ms Gabriella Rubagotti of Counsel and instructed by Mr John Afaras of Spruson and Ferguson, Sydney represented the opponent.
Evidence
The evidence served and filed in relation to this opposition is voluminous. Location by any and all parties of relevant individual exhibits amongst the sheer volume of documentation proved problematic at the hearing. This was regrettable, especially given that it was common ground between the parties that much of the material had little or no direct relevance at all to the Green Striplight trade mark actually subject of the hearing. The majority of the documentation had been previously filed in support of the other ‘colour green’ BP trade marks subject, as I have previously mentioned, of other oppositions and court proceedings being contested between the parties. Reproduced in the table below are relevant details of these other applications, which show clearly the differences between them and the trade mark under consideration here.
Much of the debate about those trade marks, during opposition and in the Federal Court, centred upon the scope of the endorsements which delineated them at filing, versus the scope of the final wordings proposed by the examiner, in light of the evidence of use that had been filed. Accurate formulation of the wording of such endorsements is critical to how the statutory rights associated with a ‘colour trade mark’, and of course how it functions in the marketplace, may be understood. Subregulation 4.3(7) of the Trade Mark Regulations 1995 specifies that:
If a trade mark for which registration is sought contains or consists of a sign that is a colour, scent, shape, sound or an aspect of packaging, or any combination of those features, the application for registration of the trade mark must include a concise and accurate description of the trade mark.
Arriving at the most appropriate ‘concise and accurate’ description is an endeavour fraught with danger, as the Full Federal Court discussed in considerable detail in Woolworths Limited v BP plc (No 2) [2006] FCAFC 132 (4 September 2006).[1] Consideration of the trade marks in the table below gives some insight into why evidence tailored (for the most part unsuccessfully, as we now know) towards demonstrating their distinctiveness in fact (at the time of filing), was even less helpful to the cause of the conceptually different Green Striplight trade mark under consideration here.
[1] See especially paragraphs 25 to 63.
Also shown in the table below are details of trade mark number 764931. This trade mark application also features a ‘green illuminated stripe on a service station canopy’ and was the predecessor to the application at issue here. The earlier application was subject to an ex parte hearing on the question of its registrability in June 2004. At that time, the delegate indicated that while the evidence of use provided was not sufficient to demonstrate that the trade mark was distinctive of BP’s goods and services as at 1998, the year that application was filed, the evidence did satisfy that criterion as at 2003. Accordingly, she recommended a fresh application be filed. BP duly complied with her proposal. The new application is the opposed application before me here, which was accepted for possible registration, as I have reported above, under the provisions of subsection 41(6), taking into account the evidence filed in support of the earlier application.
| TM No. | Filing Date | Classes | Status | Trade Mark |
| 559837 | 17 July 1991 | 4, 37 | Cancelled by order of Full Federal Court | The trade mark consists of the colour GREEN as shown in the representation on the application applied as the predominant colour to the fascias of buildings, petrol pumps, signage boards - including poster boards, pole signs and price boards - and spreaders, all used in service station complexes for sale of the goods and supply of the services covered by the registration |
| 676547 | 25 Oct 1995 | 42 | Cancelled by order of Full Federal Court | The trade mark consists of the colour GREEN applied as the predominant colour to the fascias of buildings, petrol pumps, signage boards - including poster boards, pole signs and price boards - and spreaders, all used in service station complexes for the supply of the services covered by the registration, as exemplified in the representation attached to the application form |
| 764931 | 16 June 1998 (predecessor to subject application) | 4, 35, 37, 39, 42 | Lapsed | The trade mark consists of the GREEN illuminated stripe on the canopy edge of service stations as represented in the attached illustration |
| 909518 | 15 April 2002 | 4, 37, 43 | Pending (Acceptance due 25 Aug 2013) | The trade mark is limited to the colour GREEN shown in the representation on the application form, being Pantone shade 348C |
The evidence comprises:
Evidence in Support
- Statutory declaration of Peter John Horton, Woolworths Group General Counsel and Company Secretary dated 4 May 2009 (First Horton Declaration)
- Statutory declaration of Paul Gladstone Tebbutt, a director of 7-Eleven Stores Pty Ltd dated 12 May 2009
- Statutory declaration of Elizabeth Helen Whiteway, National Manager-Branding, Communications and Public Affairs of Caltex Australia Limited, dated 15 May 2009
Each of these declarations was made in relation to both the subject Green Striplight trade mark application and also BP’s pending colour green application (TM No. 909518, shown above).
Evidence in Answer
- Statutory declaration of Fiona Mary Brittain, BP’s solicitor, dated 1 June 2010 (‘first Brittain declaration’), which in turn exhibited:
(i) the evidence filed in support of BP’s pending colour green application (TM No. 909518, shown above):
(A) Statutory declaration of David Hugh Blore Bednall dated 28 October 2003 and
(B) Statutory declaration of Suzanne Catherine Broe dated 7 October 2004 (‘first Broe declaration’), which in turn exhibited affidavits filed by BP in the Federal Court appeal concerning BP’s prior colour green applications (TM Nos. 559837 and 676547, shown above) made by the following witnesses:
(I) Robert Franklin Hadfield dated 25 January 2002
(II) John Anthony Perry dated 25 January 2002
(III) John Araunah McCrindle dated 12 April 2002.
(ii) declarations filed in support of BP’s prior ‘green illuminated stripe’ application (TM No. 764931, shown above), being statutory declarations made by the following witnesses:
(A) Joseph Sanzone, operator of BP service stations in Western Australia, (undated)
(B) Robert Franklin Hadfield dated 1 July 1999
(C) Christopher John Gillman dated 11 August 1989
(D) Lyndell Rouzaire dated 31 July 2001
(E) David Stephen Birrell, BP Australia’s Manager Retail, dated 28 August 2001
(F) Stephen Robert Spalding, Technical Services Manager of the RACQ, dated 21 July 2003
(G) Jason Be, operator of a BP service station in Victoria, dated 24 July 2003
(H) Arvis Katins, a truck driver, dated 24 July 2003
(I) George Andrianopolous, operator of 42 BP service stations in Victoria, dated 24 July 2003
(J) Sammy Parmjuit Singh, operator of a BP service station in Queensland, dated 24 July 2003
(K) Damien Scott Matthews, director of a freight company, dated 25 July 2003
(L) Gary John Chamberlain, a fleet controller for Elders, dated 28 July 2003
(M) Malcolm Graham Reid, BP Australia’s Maintenance Services Manager, dated 29 July 2003
(N) Hamish John McKenzie, a market researcher, dated 30 July 2003.
- Second declaration of Ms Brittain also dated 1 June 2010
- Statutory declaration of Suzanne Catherine Broe dated 2 June 2010 (‘second Broe declaration’)
- Third statutory declaration of Fiona Mary Brittain dated 20 May 2011.
Evidence in Reply
- Statutory declaration of Peter John Horton dated 18 November 2011 (Second Horton Declaration).
Further Evidence (BP)
- Statutory declaration of Suzanne Broe dated 3 September 2012 (Supplementary to second Broe declaration).
The evidence shows that BP and Woolworths have been in dispute over aspects of the colouring of vehicle service stations for a number of years. BP’s declarants trace its long history in the provision of oil and petrol, and an almost equally lengthy association with the colour green:
In 1917, the Anglo-Persian Oil Company Limited (‘APOC’), which had been formed in 1909, purchased the British Petroleum Company Limited and adopted BP as its trade mark. In 1931 it adopted green and yellow as its corporate colours. In 1935, APOC changed its name to the Anglo-Iranian Oil Company, Limited which in January 1982 became The British Petroleum Company p.l.c. and in December 1998 it became BP Amoco p.l.c. In May 2001, the company changed its name to BP p.l.c.
The colour green has been associated with BP since 1923. As early as 1927 the company was using the colour green as an element of trade dress and the colour was specifically emphasised in advertising. The green petrol pump (primary identifier at the time of a petrol supplier) was promoted as differentiating BP's petrol from that of its competitors. A green background has been a consistent feature of the BP Shield Device house mark since 1947.
During the 1960s, BP updated its service stations with a green and yellow livery.
In 1987 BP decided to adopt a major worldwide re-imaging program known as Project Horizon with a key focus in the retail business being the updating and re-imaging of vehicle service stations with emphasis on green to capitalise on this traditional colour as a point of distinction from BP's competitors.
Re-imaging BP worldwide began in July 1989, and was completed in 1991, with over 21,700 service stations re-imaged in 50 different countries. During the course of Project Horizon, it was decided to adopt the shade of green equivalent to Pantone 348C as the predominant colour applied to BP’s retail services stations and as the corporate colour used by BP.
Between July 1989 and July 1991 approximately 1200 BP retail service station sites were re-imaged in Australia to the livery introduced as part of Project Horizon. By December 1995 a total of 1356 retail service station sites had been re-imaged throughout Australia.
The canopy fascia was viewed by BP as ‘a prime brand carrier and conveyor of green’. Green was also applied to all auxiliary signage, including entrance/exit signs, car wash signs, car wash fascia, shop fascia and forecourt equipment accessory units such as “Air”, Water” and “Vacuum”. Green was used as the major corporate colour in the fuel dispensing area in BP service stations.
Concurrently with the worldwide roll-out of Project Horizon, a major international advertising campaign was run in over 30 countries including Australia. In all advertising there was consistent emphasis on the colour green as a non-verbal brand identifier for BP.
A further global re-imaging program, Project Harmony, was rolled out in July 2000. The corporate identifier the BP shield was replaced by a new Helios (sun device) logo in green yellow and white. The new logo relied heavily on the colour for prominence and impact. The first Harmony service station was opened at Coomera Qld on 29 September 2000. From early 2001, the BP services stations in Australia were progressively re-imaged with 1172 sites completed and 160 left to be re-imaged by the end of 2004. The principal and dominant colour was green, with green used on all major components of the service station such as the canopy, pumps, main identification board, shop-front, car-wash and other forecourt signage.
The importance of and exact application of the colour green in all its service stations was and is emphasised in, and rigidly controlled by, BP’s ‘Visual Standards Guidelines’.[2]
[2] See: Statutory declaration of Fiona Mary Brittain, BP’s solicitor, dated 1 June 2010 (First Brittain declaration), which in turn exhibited, as Exhibit FMB-1, Statutory Declaration of Suzanne Catherine Broe dated 7 October 2004 (First Broe Declaration).
Woolworths’ association with the colour green, although not dating back as far as BP, has also developed over a significant period:
The colours used in Woolworths supermarkets have been since about 1986, and continue to be, red, green and white.
In 1996, Woolworths decided to enter the retail petrol market in Australia. The colours red, green and white were chosen for the new service stations, because they were already the colours used to identify Woolworths supermarkets and the Woolworths Supermarket logo. The placement of the service stations adjacent to existing Woolworths supermarkets was an important part of Woolworths’ strategy for entrance into the retail petrol market, as the retailing of petrol was seen to be a part of the overall retailing of goods through the Woolworths Supermarket chain. The intention was that customers should experience ‘one stop shopping’, being able to purchase groceries and petrol on a single shopping trip. To reinforce this, loyalty discounts on Woolworths petrol were offered, and continue to be offered, to Woolworths supermarket customers.
The first Woolworths Service Station opened on 1 October 1996 at Dubbo in New South Wales. By December 1998, there were 83 Woolworths Service Stations operating In Australia. Of those 83, 58 were located in car parks adjacent to shopping centres in which a Woolworths Supermarket was located.
From 2000, some Woolworths Service Stations began to incorporate convenience stores, largely as a result of Woolworths taking over sites which already included a convenience store. As at April 2004 there were 304 Woolworths Service Stations in Australia, with about 85 of these incorporating a convenience store. Various combinations of the Woolworths Supermarket colours were investigated and/or trialled for the petrol stations between 2000 and 2003, and during that time, Pantone ‘PMS 354C Green’ was settled upon as the primary green shade.
From 3 May 2004, Woolworths progressively introduced and used in its service stations a new design consisting of a red and white canopy displaying the ‘Caltex’ word trade mark and device and a new green stripes design on fascias and signage boards which also displayed the words and trade marks ‘Woolworths’, or ‘Safeway’ and ‘Caltex’. The Pantone colour chosen for the green stripes was ‘PMS 354C Green’.
As at May 2009, there were a total of 540 service stations in Australia using the new ‘Woolworths-Caltex Design’. As with BP, Woolworths’ use of colour in its service stations has always been rigidly specified and controlled via its own visual standards manuals.[3]
[3] See: Statutory declaration of Peter John Horton, Woolworths Group General Counsel and Company Secretary dated 4 May 2009 (First Horton declaration); Affidavit of Terence Neil Ludlow, former National Property Manager, Petrol, at Woolworths Limited, dated 31 January 2003 (Exhibited as PJH-11 of the Horton Declaration).
In his first declaration, Group General Counsel and Company Secretary of Woolworths, Mr Peter John Horton, outlines the company’s grave concerns about the implications for Woolworths of the successful registration of any of BP’s various trade mark applications featuring the colour green. He declares:
Woolworths is concerned that BP's Current Applications could, on registration, be interpreted in a way which may impede Woolworth's past, present and future use of the colour green in its Woolworths Service Stations. This is despite the fact that Woolworths was using and has continued to so use since October 1996 particular shades of the colour green (in combination with the colours of red and white) which may differ from the shade of green used by BP in its service stations. Woolworth's use of various designs at the Woolworths Service Stations is not and has never been for the purpose of trading off the goodwill of BP, but rather is a bona fide use of green which…has at all times been to ensure that the colours used at Woolworths Service Stations are consistent with the colours used in "Woolworths" and "Safeway" supermarkets and has since 2004 also been to convey certain environmental benefits associated with the use of fuels which release fewer emissions. [Here, Mr Horton referred to his earlier description of a relatively more recent adoption by Woolworths of Pantone colours ‘PMS 375C Green’ and ‘PMS 3416C Diesel Green’ for product indications and fuel pump splash guards identifying E10 unleaded and diesel fuel, respectively].[4]
[4] First Horton declaration, paragraph 26.
It is obvious that Woolworths’ concerns about its own ability to use the colour green if BP’s claims over the colour prove ultimately upheld are significant and enduring, given the expensive and protracted legal disputation between these two commercial giants that they have generated. This predicament throws into sharp relief business practicalities that may be overlooked during theoretical debate about whether, given apparently extensive use, any single trader should be able to monopolise any single colour as a trade mark.
There are many photographs exhibited in the evidence showing the typical get-ups of the service stations owned by the opposing parties. However, for convenience and illustrative purposes only, I have reproduced below two current representative photographs drawn from their respective websites, which show relevant details most clearly:
BP Service Station[5]
Woolworths-Caltex Service Station[6]
[5] of opposition
Prior to the hearing, Woolworths indicated that, despite the several grounds of opposition listed in its notice, it now intended to rely only upon the ground under section 41 of the Act.[7] At this point, for completeness, I find that none of the other grounds listed have been made out, although I note that they would be again available to the opponent in the event of an appeal from this decision.
Section 41 - Trade mark not distinguishing applicant’s goods or services
[7] The Intellectual Property Laws Amendment (Raising the Bar) Act2012 came into full effect on 15 April 2013. The Act repeals section 41 of the Trade Marks Act 1995 and substitutes it with a new section 41. However, as Mr Shavin conceded at the hearing, the repealed provisions continue to apply here, because the subject application was filed prior to 15 April 2013.
The legislation
Section 41 of the Act deals with a trade mark’s capacity to distinguish an applicant’s goods or services. The section relevantly provides:
(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).
Submissions
Mr Catterns, for Woolworths, made the following submissions in relation to the onus upon the opponent in the case of a ground of opposition under section 41, and how this specifically relates to the present application:
An analysis under s.41 takes the courses set forth below (see: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2013) 99 IPR 492 per Emmett J at [15]-[17]).
First, under s.41(3) having regard only to the trade mark, the Registrar is required to determine whether it is inherently adapted to distinguish the designated goods or services from the goods or services of other persons (Cantarella at [15]).
A presumption of registrability applies in relation to s.41(3) of the Act, that is, the mark is presumed to be sufficiently adapted unless the Registrar is not so satisfied on the balance of probabilities: Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 201 FCR 565 per Dodds-Streeton J at [13] and [ 42]; Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60 at [21] per Sundberg J.
In this connexion, it is necessary to assess the likelihood that other traders actuated only by proper motives would wish to use the mark or one closely resembling it at the lodgement date on or in connection with their goods or services: Fry Consulting at [44].
The opponent bears the onus under s.41(3).
As a next course, if the Registrar is unable to resolve the question contained in s.41(3) but finds that the trade mark is to some extent inherently adapted to distinguish, etc, the Registrar is to consider whether the trade mark does or will distinguish the designated goods as being those of the applicant by reason of the trade mark's inherently adaptability to distinguish together with the trade mark's use or intended use by the applicant and any other circumstances: s. 41(5).
As Kenny J observed (at [100]) in Sports Warehouse v Fry (2010) 186 FCR 519:
Section 41(5) permits the registration of a trade mark that is not inherently sufficiently adapted to distinguish, but that has as at the lodgement date in fact acquired a capability to distinguish the relevant services: see Chocolaterie Guylian [(2009) 180 FCR 60] at [84] and Austereo [(2004) 61 IPR 257] at [51]. In other words, s.41(5) recognises that marks which are insufficiently inherently adapted to distinguish may nevertheless by their use or other circumstances have become distinctive in the minds of consumers so that they will be able to "do the job of distinguishing" the applicant's goods: Chocolaterie Guylian at [84]. Thus, under s.41(5), an applicant relying on use prior to the lodgement date will need to show that the mark has in fact been used as a trade mark prior to the lodgement date so as to have acquired the requisite capability to distinguish the applicant's goods: Chocolaterie Guylian at [84].
A trade mark possessing a very low level of inherent adaptation to distinguish will require correspondingly high levels of use as a trade mark and other circumstances in order to permit registration: Cantarella at [107]; Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd (2003) 134 FCR 51. In the case of common, descriptive or laudatory words, even extensive use is unlikely to be sufficient: Cantarella at [107]; Re Ocean Spray Cranberries Inc (1999) 46 IPR 601 at [24]). As Emmett J observes in Cantarella (at [107] and [108]):
The test must lie in the probability of ordinary persons understanding the words, in their application to the goods, as describing, indicating or calling to mind either their nature or some attribute they possess (Mark Foy 's [(1956) 95 CLR 190] at 195).
Distinctive means that the mark distinguishes the registered proprietor's goods from others of the same type in that market. However, distinctive does not mean that the goods must specifically identify the registered proprietor as the source of the goods. What is important is that a significant number of consumers in the relevant market identify the registered proprietor's goods as coming from one trade source (Johnson & Johnson [(1991) 30 FCR 326] at 335-336).
In this context, the use must be use of the trade mark the subject of the application to distinguish the applicant's goods: Fry Consulting at [99].
The applicant bears the onus of establishing the matters required under s.41(5) (cf. s.41(3)): Fry Consulting at [98]; Chocolaterie Guylian at [21].
Thirdly and alternatively to the analysis under s.41(5), if the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish, etc but because of the extent to which the applicant has used the trade mark before the filing date of its application, the applicant establishes that the trade mark does distinguish the designated goods as being those of the applicant, then the trade mark is taken to be capable of distinguishing the designated goods from the goods of other persons: s.41(6)(a).
The applicant also bears the onus of establishing the matters required under s.41(6): Chocolaterie Guylian at [21].
In the opponent's submission the proposed mark possesses no inherent capacity to distinguish the applicant's goods and services from those of other persons.
The issue is to be determined in the manner adopted by Sundberg J in Chocolaterie Guylian at [75], namely:
The ultimate question on the issue of inherent adaptation is whether a sign - in this case, a shape - possesses any ordinary significations and, if it does, whether or not other traders might think of the shape and want to use it for those ordinary significations in a manner which would infringe a registered mark in respect of the sign. In cases where a shape depicts a known object or concept (cf wholly concocted or ambiguous shapes), and is therefore likely to signify the same to most if not all consumers, then a subsidiary question is whether the shape is nevertheless sufficiently distinctive or unique so that other traders wishing to represent the same or a similar concept will remain free to do so without infringing the mark, that is, without requiring use of the same shape or one substantially identical or deceptively similar. An important consideration in all of this is the nature of the goods for which the shape mark is to be used.
The proposed mark is composed of two elements: (i) a colour (green) and (ii) a function (it is a light which serves to illuminate service stations, particularly at night). The capacity of the colour green, as used by the applicant in connexion with its services stations, etc, inherently to distinguish the applicant's goods and services from those of other traders was considered by Finkelstein J in BP plc v Woolworths Ltd (2004) 62 IPR 545 . His Honour held (at [23]) that:
... 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.
Bearing his Honour's observations in mind, and considering the mark as a whole, given the purely functional and decorative aspects of the additional aspect of the proposed mark (it is a light), it possesses no further characteristic that renders the trade mark inherently adapted to distinguish the applicant's goods and services from those of other persons. There is nothing distinctive, concocted or inventive in the shape of the light, nor in its representation in the trade mark under the canopy of a service station.
Accordingly, another trader might, without improver motive, want to use the proposed mark in relation to his or her goods or services. That is particularly so in circumstances where the evidence clearly demonstrates that:
(a) other traders in Australia use various shades of the colour green in their livery and trade marks in connection with class 4 goods and services in classes 35, 37 and 43;
(b) green is frequently used by other traders with the service station and refueling industries to denote environmentally friendly products, including biofuels;
(c) a strip of light beneath a service station canopy is plainly utilitarian: it lights up the service station by day and by night; and
(d) a strip of light beneath a service station canopy is also decorative in nature.
In this regard, "[t]he interests of strangers and of the public are ... bound up with the whole question" of whether a mark is inherently adapted to distinguish: Clark Equipment Company v Register of Trade Marks (64) 111 CLR 511 at 514 per Kitto J. As best as possible, the Registrar should make an assessment as to the ability of other traders to depict a green neon or LED strip-light under a service station canopy in a way that would not infringe the proposed mark if it were registered (see Chocolaterie Guylian at [78]).
In the opponent's submission, the proposed mark, plainly possesses associations and significations which prevents it from being inherently adapted to distinguish the applicant's goods and services. They are plainly not so unique or imaginative that other traders using a strip-light for its ordinary signification will be able to avoid potentially infringing the mark if it were registered. It is noteworthy that other traders will face particular difficulty in ascertaining the scope of the monopoly, in circumstances where no particular shade of green is claimed in the proposed mark, nor any particular length or width of the strip-light; nor any particular positioning of the strip-light beneath a service station canopy. This gives rise to a higher potential for other traders who wish to use similar lighting to do so in a manner that would infringe the applicant's desired monopoly.
In the opponent's submission, it follows that there is no basis upon which the Registrar can resolve the matter under s.41(3). Accordingly, the matter falls to be determined by reference to s.41(5) or s.41(6).
Mr Shavin, in response, summarised his arguments for BP under the following points:
BP’s presently opposed trade mark (Green Striplight Trade Mark) is inherently adapted to distinguish. Woolworths’ evidence simply does not demonstrate any use of a green striplight by any service station operator other than BP. Indeed, Woolworth’s evidence does not address the use of any striplight at all, of any colour.
It follows that Woolworth’s evidence falls well short of discharging its onus under s 41(3) of the Trade Marks Act 1995 (TMA) to establish that a green striplight was “ordinarily” used by other traders by 19 August 2004 to indicate the kind, quality or other characteristics of the specified goods or services.
Under s 41(3), the Green Striplight Trade Mark should be accepted as inherently adapted to distinguish such that it is registrable without resort to s 41(5) or (6).
In any event, registration under s 41(5) and/or (6) would also be justified by the evidence described in detail [in the hearing submissions]. Woolworths’ criticism of BP’s evidence is pedantic and peripheral, and does not address the clear distinguishing effect of the BP’s Green Striplight Trade Mark arising from the evidence of a range of witnesses.
Mr Shavin led me through the various parts of BP’s evidence that did specifically deal with the Green Striplight trade mark, and which predated its filing by ‘a year or so’. This evidence was originally filed in support of BP’s prior Green Striplight trade mark, no. 764931, as I have described earlier. He grouped the evidence in the following manner:
Declarations by employees of BP Australia BP Australia Limited (BP Australia), a wholly owned subsidiary of BP, namely David Birrell and Malcolm Reid
Declarations by directors of companies which operate BP service stations, namely George Andrianopolous, Joseph Sanzone, Sammy Singh and Jason Be
Declarations by customers of BP service stations, namely Arvis Katins (a truck driver), Gary Chamberlain (Elders), Damien Matthews (GTS Freight) and Stephen Spalding (RACQ) and
Evidence of a survey undertaken in March 2003.
Mr Shavin went on to describe what he insisted to be the very persuasive nature of the survey and declarations as follows:
Hamish McKenzie made a declaration in July 2003 in support of BP’s Prior Green Striplight Application, in his capacity as an Associate Research Director for ACNielsen Research Limited (ACNielsen), which specialises in market research and, in particular, consumer research into consumer attitudes and behaviour.[8]
[8] McKenzie 30/7/03 at [1]
ACNielsen conducted a consumer survey for BP in March 2003 in relation to the green strip light trade mark. The survey was conducted by way of face to face meetings carried out between Friday 7 March and Sunday 9 March 2003. On a door to door basis, 180 consumers aged 14 years and over were surveyed in metropolitan Melbourne and 70 consumers aged 14 years and over were surveyed in rural Victoria.[9]
[9] McKenzie 30/7/03 at [6]
84% of survey respondents drove a motor vehicle at least once per week.[10]
[10] McKenzie 30/7/03, exhibit HJM-1, page 7
The first question of the survey involved showing the survey respondent a drawing of a service station as follows:[11]
[11] The photo card shown to the survey respondents is annexed to Mr McKenzie’s report.
Survey respondents were then asked: “This is a drawing of a service station. As you can see, there is a strip light along parts of the canopy. Do you associate this strip light with any particular company?”
44% of survey respondents answered “yes” to this question.[12]
[12] McKenzie 30/7/03, exhibit HJM-1, page 4.
Those who answered yes to the first question were then asked “which company?” 83% of those persons identified BP.[13]
[13] McKenzie 30/7/03, exhibit HJM-1, page 4
Woolworths’ submissions at [17] complain that “This survey is of little assistance in determining whether the proposed mark distinguishes the applicant’s goods or services for the purposes of s 41 of the Act: it tests only association, which is not determinative of the issue.” With respect, this submission does not make sense.
The relevant question under s 41(6) is whether the Green Striplight Trade Mark “does distinguish” BP’s goods and services sold at its service stations from those of other traders. The survey answers this question directly: a significant number of survey respondents associated the striplight with BP. In the minds of these survey respondents, the green striplight distinguished the service station as a BP service station rather than a competitor’s service station. Such evidence goes to heart of the enquiry under ss 41(6) and 41(5).
Woolworths’ submissions at [47] contend that the presence of other trade marks such as the letters BP and various shield logos “has the effect of diluting any trade mark significance that might otherwise attach to a green canopy strip-light”.
This complaint ignores the evidence of several witnesses such as Mr Katins, Mr Matthews, Mr Andrianopoulos, Mr Sanzone, Mr Singh and Mr Be, who describe the distinguishing effect of the green striplight at night and from a distance, when such other trade marks are not visible.
On this point, Woolworths’ case is not assisted by its frequent references to the decision in Chocolaterie Guylian NV v Registrar of Trade Marks.[14] That case related to a seahorse shape used for chocolates. In the passage relied upon by Woolworths, Sundberg J noted that the trade marks GUYLIAN and a stylised G were prominently displayed on all boxes in which the chocolate was sold. Unlike the present case, there was no evidence of the seahorse shape ever being visible to consumers when the GUYLIAN and a stylised G trade marks were not visible. Moreover, the context of each case is very different –shoppers for chocolate cannot be equated to drivers looking for a particular brand of service station who need to identify that brand while travelling at speed, from a distance, in daylight and at night.
In any event, it is common practice for trade mark owners to use more than one trade mark in relation to their goods and services, and it is well established that there may be use of a particular trade mark despite other marks appearing on the product.[15]
Would anyone seriously contend that the word NIKE alone is not used as a trade mark because it is usually accompanied by a “swoosh” logo? No such concern appears in Campomar Sociedad Limitada v Nike International Ltd.[16] Similarly, to take some well known Australian examples, it is clear that HOLDEN and COMMODORE are two trade marks, as are FORD and FALCON, and QANTAS and a flying kangaroo logo, despite their common usage as composite trade marks.
In Peter Bodum A/S v DKSH Australia Pty Ltd,[17] the Full Federal Court considered whether a reputation existed in the features or shape of a particular coffee plunger product. Although this was a case for passing off and misleading conduct rather than trade mark infringement, it is comparable to the present case insofar as the Full Court was required to consider the respective reputations held (on the one hand) by the features or shape of the coffee plunger product and (on the other hand) by the BODUM brand applied to that product. The Full Court explicitly rejected the suggestion that the appellant’s reputation subsisted simply in the BODUM brand name, or alternatively, that in the absence of the BODUM brand name there was no independent reputation in the features or shape of that product.[18]
Woolworths’ submission, applied generally, would prevent the registration of most of the “non-traditional” trade marks which Parliament has specifically legislated as registrable since 1995. A shape, colour, sound or scent trade mark is likely to be used in conjunction with a word trade mark so that consumers and traders can refer orally to the goods or services in question. On Woolworths’ argument, the colour orange could not distinguish Veuve Clicquot’s champagnes and sparkling wines because those goods invariably bear the trade mark VEUVE CLICQUOT, contrary to the decision in Re Application by Veuve Clicquot Ponsardin.[19] One must be careful not to apply such an argument in such a way which would deny Parliament’s clear intention that these non-traditional trade marks should not only be registrable, but indeed should benefit from a presumption of registrability under s 33(1).
The assessment of whether BP’s Green Striplight Trade Mark has been used as a trade mark is made from the perspective of what a person looking at it would see and take from it, as to the purpose and nature of its use.[20]
The evidence set out above demonstrates that BP’s Green Striplight Trade Mark has been used in such a way as to amount to a distinctive trade mark, in addition to and separate from the other BP trade marks. This is particularly so at night time, when the green striplight is more easily visible than the other trade marks displayed on a BP service station.
In light of such evidence, notwithstanding the presence of other BP trade marks, BP’s Green Striplight Trade Mark signifies BP’s brand to consumers, which satisfies the established test to identify its use “as a trade mark”.[21]
[14] (2009) 180 FCR 60 at [97].
[15] Alcon v Bausch & Lomb (Australia) Pty Ltd (2009) 83 IPR 210 at 239 [156] per Foster J; Wellness Pty Ltd v Pro Bio Living Waters PtyLtd (2004) 61 IPR 242 at 247 [22]-[28] per Bennett J; Nature’s Blend Pty Ltd v Nestle Australia Ltd(2010)86 IPR 1 at [40] per Sundberg J; George Weston Foods Ltd v Manildra Flour Mills Pty Ltd (1999) 47 IPR 145 at 150 per Hearing Officer Williams.
[16] (2002) 202 CLR 45.
[17] (2011) 92 IPR 222.
[18] (2011) 92 IPR 222.at 259 [186] per Greenwood J, Tracey J agreeing at 276 [272].
[19] (1999) 45 IPR 525.
[20] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 425 per Kitto J (Dixon CJ, Taylor and Owen JJ agreeing); Anheuser-Busch v Budejovicky Budvar(2002) 56 IPR 182 at 227 [186] per Allsop J.
[21] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 425 per Kitto J (Dixon CJ, Taylor and Owen JJ agreeing); Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 at 348, per Gummow J.
Discussion
There are several closely entwined issues potentially influencing my decision here. Not least of these is the question of what BP’s opposed trade mark actually represents. I have serious doubts about whether it should be considered as a simple ‘single colour’ trade mark at all. The endorsement does not refer to a specific shade of green applied to many surfaces in a service station, but to a specific green-coloured thing - a striplight – attached to a specific (lower) edge of a specific sort of canopy – over the petrol pumps – at a vehicle service station. Conceptually, the subject mark differs significantly from BP’s other disputed trade marks, despite being lumped together with them, for the purposes of the evidence filed by both parties in this opposition. In his submissions, after arguing that I should really find the opposed application to be inherently adapted to distinguish in terms of subsection 41(3), Mr Shavin drew my attention to the following registered trade mark, number 585856, which was accepted and registered under the provisions of subsection 41(5). He submitted that this trade mark was ‘closely comparable’ to BP’s Green Striplight opposed trade mark:
Endorsement:
The mark consists of a pink glow created by a row of pink coloured lights extending along a fascia of a building or a pink glow created by pink coloured lights mounted on the exterior or interior walls of a building within which the specified services are provided, as illustrated in the example depicted in the representations of the mark.
I disagree. The above trade mark endorsement describes a purportedly distinguishing feature of a pink coloured glow, created by pink coloured lights. This is not the same as a trade mark that supposedly consists of a green striplight. Initially, my opinion upon whether the conceptual dilemma of what BP’s opposed trade mark actually is takes it towards or away from being inherently capable of distinguishing in terms of subsection 41(3) was swayed by Mr Shavin’s submissions upon that point. It is true that Woolworths have provided no evidence of any use by other traders of any striplight, of any colour. Can it really be said that such a thing is ‘ordinarily used to indicate’, in terms of the opposite end of the spectrum under subsection 41(6), any characteristic of fuel, or services associated with the provision of such fuel, or of the provision of food and drink? BP’s argument that, under those circumstances, Woolworths had not discharged the initial onus upon it in terms of its opposition under section 41 seemed not wholly without merit.
However, that was not the end of the matter. In Philmac Pty Limited v The Registrar of Trade Marks[22] Mansfield J had this to say about the considerations in terms of section 41 under which trade marks such the Green Striplight should be tested:
In my view, the question posited by s 41(3) should be addressed by reference to both the colour itself and the class of the goods to which the colour is applied. Importantly, the question of whether a mark is inherently adapted to distinguish certain goods must be considered independently of the effect of its use and registration: see generally DR Shanahan; Australian Law of Trade Marks and Passing Off, Law Book Company 1990, p 121. In `Weldmesh' Trade Mark [1966] RPC 220 at 228 "inherently adapted" was said to mean "adapted of itself, standing on its own feet". That is a different concept from the capability of a mark to distinguish a trader's goods or services once registration is achieved and other persons are thereby precluded from using it…
I have little doubt that the Philmac mark would indeed distinguish Philmac's goods from those of other traders if it were registered as a mark and other manufacturers were thereby precluded from using it in relation to the designated goods. But that is not presently the question for consideration. Stating the question in that way does no more than state that by securing a monopoly in a phrase, colour, smell or any other sign, a trader would, in using that sign, distinguish its goods or services from those of other traders. Whether a mark is capable of registration under the Act and by virtue of s 41(2) and (3) is a conceptually distinct question…
The consequences of a grant of registration, whether a logo, colour, scent, aspect of packaging or any other thing satisfying the statutory definition of a "sign" are two fold. First, the registration or pending registration of the mark is a ground for rejection of any subsequent application for registration of a mark that is identical or substantially identical or deceptively similar to it: s 44. Secondly, the registration gives rise to a right in the proprietor of the mark to an action for infringement in circumstances where another trader uses as a trade mark a sign that is substantially identical with, or deceptively similar to the trade mark in relation to goods or services in respect of which the trade mark is registered: s 120.
In the present application, the 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 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. That is, (to superimpose the words of the test to the context of colour marks) the limited palate of colours available to a trader at the very least renders it more likely 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 the colours forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of a colour and want to use it in connection with similar goods in a manner which would infringe a registered trade mark granted in respect of it. Stating the proposition in that way equates it with what has become known in international jurisprudence as the "colour depletion" argument…
By approaching the matter in that way, despite what the USA Federal Court in Pink Batts defined as a "colour depletion argument", I do not mean to suggest that a single colour applied to goods may never be inherently adapted to distinguish an applicant's goods from those of other traders. Such a conclusion would be inconsistent with the provisions of the Act that contemplate that a colour may serve as a trade mark. The definition of a sign in the Act provides that a colour may be a sign in its own right, and not merely as an element of another species of sign such as a logo or aspect of packaging. It would therefore not be in accordance with the Act to reject a trade mark purely on the basis that rejection would secure a monopoly over part of what is in reality a limited resource. However, having regard to the above principles and the test in Clark Equipment, I consider that the circumstances in which a colour applied to goods will be inherently adapted to distinguish are limited to the following:
* the colour does not serve a utilitarian function: that is, it does not physically or chemically produce an effect such as light reflection, heat absorption or the like;
* the colour does not serve an ornamental function: that is, it does not convey a recognised meaning such as the denotation of heat or danger or environmentalism;
* the colour does not serve an economic function: that is, it is not the naturally occurring colour of a product and registration of that colour in respect of that product would not thereby submit competing traders to extra expense or extraordinary manufacturing processes in order to avoid infringement;
* the colour mark is not sought to be registered in respect of goods in a market in which there is a proven competitive need for the use of colour, and in which, having regard to the colour chosen and the goods on which it is sought to be applied, other properly motivated traders might naturally think of the colour use it in a similar manner in respect of their goods.[23]
[22] [2002] FCA 1551 (13 December 2002); (2002) 126 FCR 525; 56 IPR 452; [2003] AIPC 91-841.
[23] [2002] FCA 1551 (13 December 2002), paras 44, 46, 59-60, 65.
As quoted above, Woolworths have made a number of arguments, supported by evidence, which indisputably demonstrate that BP’s opposed trade mark falls foul of this list at most points. The question of whether it is actually possible to reliably determine, from the representation and the wording of its endorsement, the full practical scope of the Green Striplight trade mark becomes moot in the face of this conclusion. So too does BP’s argument that Woolworths has produced no evidence of other traders actually using a green striplight on the canopies of their service stations. 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. It is in the category described in the explanatory note to subsection 41(6), and envisaged by Jacob J in British Sugar PLC v James Robertson & Sons Ltd when he said:
The phrase [‘devoid of any distinctive character’] requires consideration of the mark on its own assuming no use. It is the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark.[24]
[24] [1996] RPC 281 at 306 in relation to s. 3 (1) (b) of the Trade Marks Act 1994 (U.K).
I find that Woolworths has discharged the onus upon it, in terms of subsection 41(3), and that the provisions of subsection 41(6) appropriately apply to BP’s opposed trade mark.
Of course, that is still not the end of the matter. Mr Shavin argued that should I find, despite his submissions, the Green Striplight trade mark does in fact not qualify for registration in terms of subsection 41(3), in any event, BP has provided more than sufficient evidence to support its original acceptance under the provisions of 41(6). Once again, I must disagree. Notwithstanding Mr Shavin’s protestations to the contrary, I believe the words of Sundberg J are particularly illuminating in this matter:
In Unilever plc’s Trade Mark Applications [2003] RPC 35 (Unilever) (the Walls’ “Viennetta” case), Jacob J considered survey evidence which demonstrated a “high degree of association” (approximately 67% of ice cream eaters) between an image of the “Viennetta” ice cream and its manufacturer, Walls. (Respondents were shown four ice cream products and asked if they recognised them). At 662, his Lordship said:
Putting the other products on one side for the moment, there can be no doubt that the product appearance has achieved considerable recognition on its own as denoting Walls’ “Viennetta” – the product of a particular manufacturer. Is that enough to give it a “distinctive character” within the meaning of Art.3(3)? For what has not been proved is that any member of the public would rely upon the appearance alone to identify the goods. They recognise it but do not treat it as a trade mark.
There is a bit of sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well-known. He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so. He then gets registration of the shape alone. Now he is in a position to stop other parties, using their own word trade marks, from selling the product, even though no-one is deceived or misled.
I do not think that is what the European Trade Mark system is for. It is a system about trade marks, badges of trade origin. For that reason I think that in the case of marks consisting of product shapes it is not enough to prove the public recognises them as the product of a particular manufacturer. It must be proved that consumers regard the shape alone as a badge of trade origin in the sense that they would rely upon that shape alone as an indication of trade origin, particularly to buy the goods. If that cannot be proved, then the shape is not properly a trade mark, it does not have a “distinctive character” for the purposes of trade mark law.
Notably, his Lordship also considered it relevant that a not insignificant proportion of the survey respondents (approximately 15%) identified one or more of the other ice creams as the “Viennetta”, as this showed the potential for infringement by other traders seeking to sell a similar product.
In BP (No 2) [2006] FCAFC 132; 154 FCR 97, the Full Court of the Federal Court held that BP Plc (BP) had failed to establish pursuant to s 41(6) that it had used a particular shade of green as a trade mark, either by itself or as the predominant colour in its branding. Two aspects of their Honour’s reasoning are instructive. First, the Court took into account survey evidence indicating, on a weighted basis, that 85% of respondents identified BP when they were asked to look at a picture of a building (a service station) which was coloured substantially in green and were asked to describe what they saw. In considering an expert’s conclusion that this showed a “strong association” between green and BP, the Court stated at [117]:
This conclusion is hardly surprising. Green had been one of BP’s company colours since at least 1956. After 1989 it had been used as the predominant colour with yellow. In particular, in circumstances where there were only a few oil companies, where all have used colour historically to distinguish themselves, where BP has been the only company before 1995 to use green in that way, it 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). Evidence of promotion and use does not, without more, demonstrate distinctiveness: see Blount Inc v Registrar of Trade Marks at [61G], citing with approval Jacob J in British Sugar Plc v James Robertson & Sons Ltd at 286 and 302; and Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (200) FCR 90 ... at [13]. It is necessary for BP to establish that the association is referable to the use of the mark as a trade mark. The learned authors of Kerly’s Law of Trade Marks and Trade Names (14th ed, Maxwell Ltd, UK, 2005, at [8–025]) state, albeit in the European context, that to establish distinctiveness through use the proprietor must have done something in its use to identify the sign as being a trade mark; the use of a sign, without more, does not necessarily create the perception that the products originate from a particular trade source: compare Unilever Plc’s Trade Mark Applications [2003] RPC 35 at [31].(Emphasis added.)
Ultimately, their Honours concluded at [118] that:
These responses are consistent with a recognition that green has always been part of the BP colour scheme; however, they do not lead to the conclusion that green alone, or green predominantly with other unspecified colours, has been used as a trade mark.[25]
[25] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009), paras 91-94.
Equally, in this matter, BP’s evidence, including its survey evidence, (although duly noting that it was drawn from a different survey from that referred to in ChocolaterieGuylian) does not lead to the conclusion that a green striplight affixed to the edge of a canopy of a service station either has been used by BP as a trade mark, and/or has been recognized by its customers as such. More is required to demonstrate that the Green Striplight had achieved distinctiveness in fact, at the time the application was filed. Fundamental to this enquiry may have been BP’s own guidelines for use of the Green Striplight, given that, as its evidence demonstrates, the company endeavours to control every physical aspect of its commercial presentation with an iron fist. Mr Shavin observed at the hearing that the Green Striplight was the only common element carried across from the 1989 global re-imaging program Project Horizon to the later Project Harmony program, rolled out in 2000. He argued that the abandonment of the familiar ‘BP Shield Device’ when Project Harmony was initiated, placed the new green and yellow ‘Helios Device’ and the ‘Green Striplight’ on an equal footing as trade mark ‘allusions’, by which I took him to mean trade marks without words or letters. However, ‘allusions’ notwithstanding, as can be seen clearly in the photograph of a BP service station reproduced earlier, the letters ‘BP’, although no longer part of a shield device, and now appearing in lower case, still feature prominently in the normal service station get–up.
Further, Mr Shavin could point to nothing in the evidence that might suggest that the company itself placed the kind of import upon the inclusion of the Green Striplight on its service station canopies as might be expected as appropriate for one of its most important trade marks. Quite the opposite, in fact. Mr Shavin briefly alluded in his submissions to the further evidence filed by BP, which comprised a supplementary statutory declaration by Ms Suzanne Broe, Company Secretary and Legal Officer of BP Australia Ltd. Ms Broe clarified figures given in her second declaration, dated 2 June 2010. In that earlier declaration, she had stated that ‘out of 1,224 BP branded service stations in Australia, 21 feature the Green Striplight which is the subject of Trade Mark Application No. 1016694’. However, as she explained in her declaration of September 2012:
It has since come to my attention that the figure originally provided to me for the purposes of the Evidence in Answer related to the Green Neon Striplight which formed part of the Applicant's superseded Horizon livery. The Striplights which are currently in use on the canopy of BP Service Stations comprise LED lighting supplied by Lighting Systems, Inc. The total number of Striplights affixed to the edge of the canopy of the Applicant's service stations is more than 230 nationally at the present time.
Of course, evidence relating to circumstances in either 2010 or 2012 does nothing towards demonstrating the situation at the filing date in 2004. Leaving that fundamental point aside, however, I find it in any case impossible to reconcile these figures with Mr Shavin’s submissions that BP’s introduction of its Project Harmony re-imaging had elevated the Green Striplight featured in the program to the status of one of its most prominent trade marks. If this had really been the case as early as 2000, green striplighting would hardly be an optional feature appearing on less than 20% of the company’s available service station canopies in 2012. It is small wonder that BP has not been able to provide convincing evidence that it has educated its customers to identify its use of the Green Striplight as trade mark use, when it has been unable to provide any evidence demonstrating that it has ever identified its use to its own staff in that way.
Having considered the applicant’s case against the criteria set out in subsection 41(6), I am not satisfied that, because of the extent to which it had been used, the Green Striplight trade mark did distinguish the relevant (broad range of) goods and services provided by BP, at the time the application was filed. The opponent has made out its ground of opposition under section 41.
Decision
Subsection 55(1) of the Act provides:
(1) Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
The onus is upon the opponent to establish one or more of its grounds of opposition, according to the balance of probabilities.[26] It has established a single ground under section 41. I therefore refuse to register trade mark number 1016694.
[26] Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo [2011] FCA 1540 (30 November 2011) per Stone J at [11] to [12].
Costs
The opponent has sought its costs in this matter and it is usual for costs to follow the event. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant, BP.
Claudia Murray
Hearing Officer
Trade Marks Hearings
8 August 2013
11
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