In a battle now spanning over a decade, another colour trade mark application filed by BP (this time for the shade Pantone 348C) has been successfully opposed by Woolworths before Australia’s Trade Marks Office.
The Hearing Officer found that while Australian consumers associate the colour green with BP, there was no convincing evidence that consumers distinguish the BP brand based on the applied-for green shade alone. While BP has registered Pantone 348C green in the UK, their repeated attempts to register the same shade here in Australia have failed.
The decision highlights the difficulties and ambiguities surrounding the registration of colour marks. Brand owners will face an uphill battle in proving that a colour mark has acquired distinctiveness when it is used together with a house brand. Absent clear guidance from the courts that a colour mark can attain distinctiveness through combined use with other marks, and what exactly the threshold of recognition is, decisions of this type will continue to be handed down.
Colour as a Trade Mark
It is clear from the Act (sign is expressly defined to include colour) that a colour mark is registrable under Australian law. However, the prevailing view appears to be that a per se colour mark can never be inherently distinctive, and thus must meet the requirements of section 41(6) (in issue in the BP decision), now section 41(3).
There are difficulties in meeting the requirements under 41(6) and (3), specifically in circumstances where the mark is a colour and is used together with another key indicator such as the BP logo. Of course, there has been – as there must be – recognition under Australian law that various marks can be used together and separately all at the same time (for a recent example of this recognition, see our case on the Coke v Pepsi shape mark battle in New Zealand).
There have been some high profile battles over colour marks in recent years. After a bit of a (cat) fight, Mars has registered the colour purple for cat food in Australia, which is used on its WHISKAS products. However, Cadbury couldn’t overcome a challenge by Nestlé, and failed to register the colour purple in the UK, though that decision could be seen to be limited to issues with the verbal description of the mark. We explained some of the key issues around the factual distinctiveness requirements in our previous post about the Kit Kat shape trade mark.
BP’s trade mark application has a long history. The company first attempted to register the colour green as a trade mark for fuels, service stations, foods and drinks (among other goods and services) in 2002. At that time, the description did not include a Pantone shade. Woolworths opposed the application and the Registrar refused the application on the grounds that it was not to any extent inherently adapted to distinguish the applicant’s goods and services (then section 41(6) of the Trade Marks Act). BP successfully appealed the Registrar’s decision to the Federal Court and in 2004 the application was accepted, with an amendment to the endorsement, limiting the use of the colour to the predominant colour of fascias and other elements of service stations.
The decision was appealed to the Full Federal Court, which disallowed the amendments in 2006. In 2010, acceptance of the trade mark was revoked and the original trade mark description reverted to. The Trade Marks Office re-examined the trade mark and again rejected it on the grounds of non-distinctiveness.
The Latest Decision
BP then amended the description of the trade mark to refer to Pantone shade 348C. The Trade Marks Office had to consider whether, as amended, the trade mark passed or failed the distinctiveness test.
The Hearing Officer followed the Federal Court’s original BP decision and found that the colour green was not to any extent inherently adapted to distinguish BP’s goods and services. Therefore, BP had to bring evidence that the colour green in fact distinguished its goods and services because of BP’s use before the filing date under section 41(6).
BP’s evidence consisted of several statutory declarations showing extensive use of the colour green on service stations by BP, both in Australia and overseas, since the 1960s. The Hearing Officer accepted that BP had a clear subjective intention to use the colour green as a trade mark, but this intention was not decisive.
BP had also filed survey evidence, that 85% of respondents referred to BP when shown a computer generated service station image with elements coloured green. This same survey was considered in the earlier decisions of the Federal Court and Full Federal Court, but in the context of the colour green being used as the predominant colour of fascias.
The Hearing Officer found that while respondents associated the colour green with BP, they did not recognise green as a trade mark of BP. The evidence was not sufficient to establish that green in fact distinguished BP’s goods and services in 2002, so did not meet the requirements under section 41(6). Unfortunately, the Hearing Officer did not elaborate on what would have been sufficient evidence that the colour green had acquired a secondary meaning to distinguish BP’s goods and services.
The registration of colour marks is highly fact-specific, because such marks will generally be considered under the requirements of section 41(6).
This means that the evidence put forward must convince the decision-maker that the colour alone is a brand of the Applicant. Surveys aimed at demonstrating factual distinctiveness should be drafted with this in mind.
A full copy of the decision can be found here.