In Woolworths Limited v BP p.l.c. [2013] ATMO 61, the Australian Trademark Office has rejected BP’s trade mark application for the colour green as the predominant colour of a service station.

Since 1997, BP and Woolworths have been engaging in long running court battles over the colour green.  Green as a trademark, that is. BP has been attempting to register as a trademark the colour green as the predominant colour of service stations.  All attempts have been fought off by Woolworths. Woolworths has been using the colours red, green and white for its service stations and was concerned about its own ability to use the colour green on service stations if BP ultimately proved successful.  This is because a trademark registration gives the owner the exclusive rights to use the trademark as a trademark in relation to the goods or services for which it is registered.  Anyone else who uses the trademark on similar goods or services could be liable for trademark infringement.

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In 2004, in a relatively recent attempt to register something green, BP applied for registration (ab0ve) of a green strip light (neon, LED or similar) affixed to the edge of the canopy over the petrol pumps at service stations.  Unfortunately for BP, the hearing officer would have none of it.

A trademark application will be rejected if the mark is not “capable of distinguishing” the applicant’s goods or services from those of other traders (s41 Trade Marks Act  1995 (Cth)).  A trademark must be distinctive; it must not be too descriptive.  It must not be the sort of trademark that other traders will legitimately want to use.

The difficulty with colours is that there is a finite number of them and it has been argued that if too many colour trademarks are registered we will run out of colours.  However the Trade Marks Act specifically allows colours to be registered as trademarks so that this argument, of itself, could not be the answer to the problem.  The hearing officer referred to the earlier case of Philmac Pty Limited v The Registrar of Trade Marks [2002] FCA 1551 (13 December 2002).  There the judge set out four tests for when a colour mark would be considered “capable of distinguishing” the goods or services:

  • If the colour does not serve a utilitarian function – eg light reflection, heat absorption
  • If the colour does not serve an ornamental function – ie it does not convey a recognised meaning eg heat, danger, environmentalism
  • If the colour does not serve an economic function ie if it is not naturally occurring so that other traders would not have to go to extra expense in order to avoid infringement
  • If there is not a proven competitive need to use the colour where other traders might naturally think to use the colour

The hearing officer felt that BP’s mark fell foul of most of the items in this list.  He considered that something as ubiquitous, utilitarian and decorative as a coloured light on a shopfront could never be, to any extent, inherently adapted to distinguish one trader’s goods or services from any other.

BP then attempted to argue that, because of the substantial use made of the strip light it had become “capable of distinguishing”.  This too was rejected by the hearing officer.

The 1995 Trade Marks Act allowed for the registration of certain new trade marks such as colour and shape.  However, it has generally proved difficult to secure registration of these marks.  In addition to setting out the numbers of goods sold under the trade mark, a trade mark owner must also prove that it has educated its customers to identify the mark’s use as trade mark use – ie that the green strip light by itself would tell the consumer that it is a BP service station.