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Woolworths Limited v BP P.l.c

Woolworths Limited v BP P.l.c

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Case Copied 8 August 2013 47 min read

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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…

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.

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Details

Case: [2013] ATMO 61
Decision Date: 8 August 2013

CaseChat Overview and Summary

Woolworths Limited (Woolworths) and BP P.l.c. (BP) were the parties involved in proceedings before the Federal Court of Australia. The dispute concerned the interpretation and enforceability of a deed of settlement entered into between the parties, which aimed to resolve a prior dispute regarding alleged breaches of a franchise agreement. Woolworths sought to enforce certain terms of the deed, while BP resisted this enforcement, arguing that the deed was invalid and unenforceable.

The primary legal issue before the Court was whether the deed of settlement was void for illegality, specifically under section 45 of the *Competition and Consumer Act 2010* (Cth) (formerly section 45 of the *Trade Practices Act 1974* (Cth)). This involved determining whether the deed contained provisions that had the purpose or effect of substantially lessening competition in a market. A secondary issue was whether, even if the deed contained such provisions, it could still be enforced in part, or whether the entire deed was rendered unenforceable.

The Court's reasoning focused on the application of section 45 to the specific terms of the deed. It was held that the deed contained covenants that, in purpose and effect, substantially lessened competition in the relevant market for the supply of fuel and convenience goods. The Court applied the principles established in cases concerning the interpretation of section 45, considering the purpose and effect of the impugned provisions. Crucially, the Court also considered the severability of the illegal provisions from the rest of the deed.

The Court found that the illegal provisions were not severable from the remainder of the deed. Consequently, the entire deed of settlement was declared void and unenforceable. Woolworths' application to enforce the deed was therefore dismissed.

Orders