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Woolworths Ltd v BP plc (No 2)

Woolworths Ltd v BP plc (No 2)

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FEDERAL COURT OF AUSTRALIA
Woolworths Limited v BP plc [2006] FCAFC 132
INTELLECTUAL PROPERTY – TRADE MARKS – applications for trade marks for the colour green as applied to service stations – amendments of applications and extent to which amendments substantially affected the identity of the trade mark and extended rights under registration for the purposes of s 65(2) and (5) of Trade Marks Act 1995 – use as a trade mark discussed – use of colour green not such as to establish distinctiveness for s 41(6) of Trade Marks Act 1995 – power of Full Court on appeal
Federal Court of Australia Act 1976 (Cth) ss 24, 28
Trade Marks Act 1955 (Cth) s 42
Trade Marks Act 1995 (Cth) ss 6, 7, 17, 27, 30, 41, 64, 65, 68, 69, 83, 195, 197, 207
Trade Mark Regulations 1995 regs 4.2, 4.3
Aldi Stores Ltd Partnership v Frito-Lay Trading Co Gmbh (2001) 190 ALR 185 applied
Antoni and Allison’s Application [1998] ETMR 460 cited
Blount v Registrar of Trade Marks (1998) 83 FCR 50 applied
BP plc v Woolworths Ltd (2004) 212 ALR 79 reversed
Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424 cited
British Hoist & Crane Co Ltd’s Trade Mark (1955) 72 RPC 66 cited
British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 cited
Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 cited
Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 applied
“Creola” Trade Mark [1997] RPC 507 cited
Johns v Australian Securities Commission (1993) 178 CLR 408 cited
Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 considered and applied
Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494 cited
Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90 applied
Landsal Pty Ltd (in liquidation) v REI Building Society (1993) 41 FCR 421 cited
Levi Strauss & Co v Kimbyr Investments Ltd [1994] 1 NZLR 332 discussed
Magarditch v ANZ (1999) 32 ACSR 367 cited
Musidor BV v Tansing (1994) 52 FCR 363 applied
New England Biolabs Inc v F Hoffman-La Roche AG (2004) 141 FCR 1 cited
Newcastle City Council v GIO General Ltd (1997) 191 CLR 85 applied
“Otrivin” Trade Mark [1967] RPC 613 cited
“Pelican” Trade Mark [1978] RPC 424 cited
Philmac Pty Ltd v Registrar of Trade Marks (2002) 126 FCR 525 discussed and approved
Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355 applied
Re Australian Rugby Union Ltd (2000) 53 IPR 438 cited
Re Lawson (2001) AIPC 91-693 cited
Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 applied
Sports Break Travel Pty Ltd v P & O Holidays Ltd (2000) 50 IPR 51 applied
Ty Nant Spring Water’s Application [1999] RPC 392; [2000] RPC 55 cited
Unilever’s plc’s Trade Mark Applications [2003] RPC 35 cited
Watkins Ltd v Renata

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: [2006] FCAFC 132
Decision Date: 4 September 2006

CaseChat Overview and Summary

In the matter of Woolworths Ltd v BP plc (No 2), the Full Court of the Federal Court of Australia was called upon to determine the registrability of certain trade marks applied for by Woolworths, which were opposed by BP on the grounds of distinctiveness and prior use. The court's decision focused on whether the marks in question, which included the colour green, were inherently adapted to distinguish Woolworths' goods and services or whether their distinctiveness could be established through prior use. The case involved a complex analysis of the distinctiveness of colour marks and the extent of their use in the marketplace.

The primary legal issue revolved around the interpretation and application of section 41 of the Trade Marks Act, specifically subsections 41(3), 41(5), and 41(6). These subsections address the inherent distinctiveness of a mark and the circumstances under which a mark may be considered distinctive if it has been used to a sufficient extent. The court was required to determine whether the colour green, as applied by BP in its service station branding, could be considered a distinctive trade mark for the purposes of registering new marks applied for by Woolworths. The court also needed to assess whether the primary judge had correctly applied the relevant legal principles in reaching his conclusions.

The Full Court found that the primary judge had erred in his approach by focusing too much on the use of the colour green in BP's overall branding rather than specifically on the use of the marks as applied for by Woolworths. The court held that the distinctiveness of a mark should be assessed based on the use of the specific marks in question, rather than the broader use of colour in the industry. The court agreed with Woolworths that the primary judge had been misled by the evidence of BP's use of green in its general branding, which did not correspond with the specific marks applied for by Woolworths. Consequently, the court held that the primary judge should have upheld BP's opposition to the registration of the marks.

The Full Court concluded that, given the amendment of the application contrary to section 65 of the Trade Marks Act, the primary judge should have rejected the registration of the marks. The court also noted that the marks were not capable of distinguishing Woolworths' goods and services and that they were susceptible to rectification, cancellation, or removal under sections 85, 88 of the Act. The court ordered Woolworths to file a draft minute of orders to give effect to these reasons and stood over the appeal for any argument as to the orders.

Orders

Orders of the court

1. Within seven days, the appellant file and serve a draft minute of orders which seeks to give effect to these reasons.

2. The appeal stand over to a date to be fixed for any argument as to the orders.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

In our view, there are obvious dangers in approaching these issues by reference to the get-up of the service stations. The foremost danger, perhaps, is that the inquiry will be diverted into an examination of the distinctiveness of the colour green alone, and away from the questions posed by s 41(6). That danger must be heightened where the evidence clearly showed that BP had used the colour green in ways, and as part of other trade marks, that did not correspond with the trade marks that were the subject of the applications in suit. For the purpose of s 41(6), the focus of the inquiry should be the use of the marks applied for, rather than use of colour as part of the get-up or packaging of goods generally: cf British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 302. Woolworths submitted that the primary judge was diverted in this way, and as a result incorrectly concluded that the trade marks the subject of the applications had been used by BP, either at all or to such an extent that they did distinguish BP’s goods and services. We agree with this submission.The evidence of use Before coming to the public advertising and “re-imaging” of service stations in “Project Horizon”, some important matters of context should be noted. First, as the primary judge’s discussion at [43]-[54] made clear, major oil companies operating service stations in Australia in the decades before 1989 had used colours in their livery or get-up. It is unnecessary to recite the detail in those paragraphs beyond our earlier outline of the primary judge’s reasons; but it can be accepted that oil companies (including BP) had a history in Australia (and other countries) of using distinctive colours as part of the get-up of their service stations. Secondly, as a reflection or illustration of the use of colour in the industry just mentioned, from the mid-1950s, BP introduced green and yellow (or as it was sometimes referred to in advertisements, gold) as the corporate colours of BP. The evidence included photographs of BP service stations in 1977 and 1989 which can be taken to be illustrative of the BP livery in the years immediately before “Project Horizon” began in 1989. These showed the prominent use of green and yellow. Sometimes, for instance in the placement of the green shield with yellow letters “BP”, these colours were used against a white background. Sometimes, for example on the fascias of the station canopy and building, green and yellow strips of equal prominence were bordered by white strips. The use of green and yellow (or gold) together as a means of distinguishing the BP brand, that is by way of use as a trade mark, is most easily understood by reference to the television advertisements screened on Australian television between 1983 and 1989. Some of these advertisements used a catchy jingle the words of which make clear to the viewer and listener the branding use, that is the trade mark use, of green and yellow (or, as stated, gold) together. The words to the jingle included:Wherever you go, you find the colours you know, go with the green and gold.It’s nice to go with the people you know, so go with the green and gold.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

As the application was amended contrary to s 65, the primary judge ought to have upheld the opposition to the registration of the marks: s 62(a). Further, the marks ought not to have been entered on the Register and are susceptible to rectification under s 85 or cancellation or removal under s 88. Later in these reasons, we consider the Court’s power to effect rectification, cancellation or amendment.Distinctiveness and the operation of section 41 In deciding whether a mark is distinctive (that is, capable of distinguishing the applicant’s goods or services from those of others: s 41(2)) the Registrar must consider whether the mark is inherently adapted to distinguish the applicant’s goods or services (s 41(3)). If it is not, the Registrar must then decide whether the mark is to "some extent inherently adapted to distinguish" those goods and services, and, if it is, whether its "use or intended use" will distinguish the applicant’s goods or services: s 41(5). If neither s 41(3) nor (5) is satisfied, the Registrar must apply s 41(6), which is in the following terms:“If the Registrar finds that the trade mark is not 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.” His Honour noted (at [16]) that the Act does not suggest that the registrability of a colour mark is to be approached any differently from that of any other mark. His Honour held (at [19]-[23]) that, for the purposes of s 41(3) and (5), the colour green, in the shade shown in the applications, was not inherently adapted to distinguish BP’s goods and services. Accordingly, his Honour had to consider whether use of the marks before the filing of the applications distinguished the goods and services of BP. As his Honour put it (at [23]), BP had to establish:“first, that it has used the particular shade of green as a trade mark and, second, that in the minds of the public the primary significance of that shade of green, when used in connection with the supply of petroleum products or the provision of petroleum services, identifies the source of those goods or the provider of those services as originating from a particular trader, though not necessarily from an identified trader.” His Honour noted (at [24]) that since most objects have some colour, merely applying a colour to a product will not act as an identifier for that product. For colour to function as a trade mark the colour must be used to distinguish products, and not as mere ornamentation or decoration. The question is whether the trader has used the colour in a way that informs the public that the product emanates from a particular source.