BP P.L.C  ATMO 59 (17 JUNE 2014)
This matter concerned an application to register a trade mark comprised of the shade of green, that is, Pantone shade 348C in relation to various goods and services related to services stations in classes 4, 37 and 43.
The history of the application is long, and there had been acceptance, rejection and re-examinations of the application, due to intervening decisions of the Federal Court of Australia and the Full Federal Court of Australia. The Delegate was mindful of any decisions and comments of the Federal Court and the Australian Trade Mark Office in relation to evidence that had already been led in those forums.
On the issue of the registrability of colour trade marks generally, the Delegate quoted Justice Finkelstein in the first instance Federal Court proceedings where His Honour stated:
“merely applying a colour to a product will not act as an identifier of that product. […] [I]t is necessary to determine whether the trader has used the colour in a way that informs the public that the product emanates from a particular source.”
It was argued by the Applicant (in response to one of the Examiner’s reports) that the fact that the application was in respect of a particular shade of green, and not the colour green per se, assisted the Applicant’s case. The Delegate however was of the opinion that the fact if the application was allowed, that other shades of green being used, may amount to a deceptively similar use of the trade mark and that therefore the Applicant’s argument should not be accepted, because consideration of what would and would not be legitimate and honest use would need to take account of the possibility of other shades amounting to an infringement.
According to the Delegate, the trade mark was not inherently adapted to distinguish the goods and services.
It was then necessary to consider the evidence of use that may have supported an acquired distinctiveness. While there was much evidence of the nature of the use of the colour green, as well as the large advertising spend of the Applicant, the Delegate considered the crucial point to be the “perception of the Australian public” in respect of the use of the colour green by BP. In this respect the Delegate referred to a survey led by the Applicant, which had also been submitted in evidence previously before the Federal Court. The Delegate referred to the comments on the survey that were made by the Federal Court, saying:
“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… The mere fact that consumers associate green with BP does not, in our view, satisfy the test of distinctiveness required.”
The Delegate was not satisfied that consumers would take any use of the trade mark in relation to all the designated goods and services as indicating those goods and services provided exclusively by the Applicant.
To view the Office decision, click here.