Australia's High Court has refused BP special leave to appeal a decision by the Full Federal Court to reject its trade mark application for green in association with service stations.
BP originally filed two trade mark applications for the colour green in relation to service stations in 1991 and 1995 (trade marks 559837 and 676547). The marks were opposed by retail chain Woolworths. The Trade Marks Registry refused the applications on the grounds that the marks were not capable of distinguishing BP's goods and services but a lower court judge allowed an appeal and directed that the marks be registered.
The Federal Court then overturned the registrations in September 2006, arguing that BP had failed to establish the factual distinctiveness of its green mark and had amended the endorsements to its applications in breach of Section 65 of Australia's Trade Mark Act.
BP had originally applied for the colour green alone, but had later changed its application to "the color green applied as the predominant colour to ... petrol pumps".
To be successful, BP had to show that the use of green had acquired distinctiveness as a trade mark though extensive use. In overturning the registrations, the Court said: "We are unable to conclude that any trade mark use of colour by BP at the relevant times has been other than green as the dominant colour in conjunction with yellow as the subsidiary colour."
In its application for special leave, BP said that the case raised important issues for the High Court to consider.
"It is not an overstatement, although some may regard it as slightly melodramatic, to say that there are aspects of trademark law which can be seen to be inexorably sliding out of control," the barrister representing BP told the Court. "This Court, and only this Court, can bring it back to its true course. In a series of decisions culminating in the decision in this case, successive Full Federal Courts have failed to appreciate the true nature of a trademark as defined by section 17 of the Act."
He went on to say: "In this case this follows from a failure by the Full Court to consider the essence of a trademark where the sign is a colour, the identity of the trademark, the subject of each of the two applications, what constitutes use of a mark and the difference between a trademark and get-up. This is the first case in Australia where a sign that is a colour has reached an appellate level."
But in a split ruling, the High Court refused leave to appeal the case on May 25. Justices Hayne and Gummow refused the appeal but Justice Kirby said it should be allowed on matters dealing with the Trade Marks Act.
"Many of the issues which the applicant seeks to agitate on appeal to this Court present issues of fact, the resolution of which would raise no point suitable for the grant of special leave," said Justice Gummow. "To the extent that the applicant seeks to assert that the Full Court made errors of law in the construction of provisions of the Trade Marks Act 1995 (Cth), we are not persuaded that these contentions enjoy sufficient prospects of success to warrant a grant of special leave."
The appeal also considered the admissibility of survey evidence in trade mark cases.
Simon Williams, senior principal with Spruson & Ferguson Lawyers, which acted for Woolworths, believes the case has two lessons for people applying for a colour trade mark in Australia: "Get your evidence, in particular any survey evidence, right and don't be overly ambitious when you apply for a mark".
In granting the trade marks IP Australia had accepted amendments to the endorsements of the trade mark. But the Full Federal Court later rejected the amendments on the grounds that they were not in compliance with Section 65 of the Trade Mark Act. This deals with amendments made after the particulars of the mark have been published.
Williams said that the decision could lead to new attacks on registered trade marks. "How many other amendments to trade marks are on the Register which may inadvertently result in potential invalidity attacks?" he said.
Woolworths opposed two further applications by BP in 2002 and 2004 (trade marks 909518 and 1016694). Both oppositions were suspended by the Trade Marks Office pending the result of BP's application for special leave to appeal.
Cadbury is involved in a similar legal battle with rival confectionery company Darrell Lea over the colour purple. On May 23 Cadbury scored a minor victory when the Full Federal Court sent a passing off case brought by Cadbury against Darrell Lea under the Trade Practices Act back to a lower court for a further hearing.
The two companies are also in dispute over the registration of the colour purple as a trade mark. Cadbury first applied to register the colour purple in 1998, three years after Australia's trade mark law was revised to allow colour registrations. In 2003 the registration was opposed by Darrell Lea and the row has now reached the courts.
In its May 25 ruling in the BP case, Justice Kirby indicated that the Court may agree to hear one of the two Cadbury cases:
"So the question is whether this is an appropriate vehicle for the Court to look at the single colour, Cadbury seems to be a much better case for that purpose if it ever comes here."
Davies Collison Cave and barristers D Shavin QC and GL Schoff represented BP. Spruson & Ferguson Lawyers and barristers SCG Burley and ADB Fox acted for Woolworths.
