End of the road: BP runs out of fuel in long-running attempt to register green as trademark

IP Australia has refused a long-running application by oil giant BP to register the colour green as a trademark in relation to vehicle service stations.

The decision (BP plc [2014] ATMO 59), handed down on June 17 2014, comes more than 12 years after BP filed its trademark application. However, it is unlikely that the outcome will surprise many, given BP’s past failed attempts to register green trademarks in Australia.

So how did BP’s past failures come back to haunt it in this latest case?

BP’s first attempt to register green as a trademark
In July 1991 BP filed three applications to register the colour green as a trademark. Each application was for the same trademark but in respect of different goods and services, in line with the practice at the time of filing separate applications for each official class of goods and services. Subsequently, when the law changed to the current system in 1996, BP’s three applications were combined into a single application (the 'first application').

In its first application, BP represented the green trademark for which it was applying by using a square of green paper together with an endorsement that read:

“The trade mark consists of the colour GREEN as shown in the representation on the application applied as the predominant colour to the fascias of buildings, petrol pumps, signage boards – including poster boards, pole signs and price boards – and spreaders, all used in service station complexes for sale of the goods and supply of the services covered by the registration.”

In October 1995 BP filed another trademark application for the colour green in respect of services not covered by the first application (the 'second application'). In the second application BP represented the green trademark slightly differently by using a sketch of a service station with various parts of the sketch coloured in green, together with a written endorsement similar to the one appearing in the first application.

Early roadblocks for BP as Woolworths enters the fray
Before the first and second applications could proceed to registration, they were opposed by Woolworths, which at the time (circa 1997) had recently entered the service station market and which, like BP, used green coloured branding. In its opposition Woolworths claimed that the green trademarks for which BP had applied were incapable of distinguishing BP’s goods and services from those of other parties, as required under Section 41 of the Trademarks Act 1995. (In each of the cases discussed here a previous version of the current Section 41 applied. However, the same legal concepts regarding the capability of colour trademarks to distinguish apply equally under the previous and current versions of Section 41.)

Woolworths was initially successful in its opposition before IP Australia. BP then took the matter to the Federal Court, where the first-instance judge overturned IP Australia’s decision and allowed the first and second applications to proceed to registration (BP plc v Woolworths Limited [2004] FCA 1362).

BP’s success before the Federal Court came largely on the back of evidence of extensive prior use of the colour green in its service stations. In light of this evidence, the judge was satisfied that the colour green had become distinctive of BP’s goods and services by the time that BP came to file its applications. The judge decided that both applications could proceed to registration under Section 41(6) on the basis that the trademarks had acquired distinctiveness in relation to BP’s goods and services by the relevant points in time (ibid at [65]).

Crucially however, the judge did not accept that the colour green was inherently distinctive of BP’s goods and services, which precluded BP from achieving registration on an alternative basis under Section 41(5). He held that green was not inherently distinctive because it was a colour used “quite innocently” by BP’s rival service station operators, and because it was in any event a “simply descriptive” colour (ibid at [23]).

Not to be outdone, Woolworths appealed to the Full Federal Court, which handed down its authoritative judgment in September 2006 (the Full Court’s judgment post-dates BP’s trademark application that is the primary subject of this article).

Full Federal Court tells BP that green is not its colour
The key issue to be determined by the Full Court was whether the first-instance judge had erred in his approach to deciding that BP’s prior use of the colour green had the consequence of making the trademarks that were the subject of BP’s first and second applications distinctive of BP’s goods and services.

In the end, the Full Court was persuaded by Woolworth’s submissions that the first-instance judge's approach was incorrect as it did not accord with the precise requirements of Section 41(6) of the act. According to the Full Court, the correct approach under Section 41(6) was not to focus on BP’s use of green as part of its general service station get-up, but rather to consider whether BP had used the specific trademarks that were the subject of its applications in such a way as to cause those marks to acquire distinctiveness.

In applying the correct approach, the Full Court concluded that BP’s evidence, at its highest, showed that BP had used the colour green in combination with the colour yellow as a trademark. However, BP’s evidence did not establish use of the colour green either alone or as a predominant colour combined with any other colour as a trademark. Accordingly, the Full Court held that neither of the green-only trademarks which were the subject of BP’s first and second applications had become distinctive of BP’s goods and services.

Without acquired or inherent distinctiveness (the first-instance court's findings regarding lack of inherent distinctiveness were not challenged by BP on appeal), the Full Court held BP’s trademarks to be incapable of distinguishing BP’s goods and services, and were barred from registration under Section 41 of the act.

BP suffers second blow attempting to register green
More recently, in August 2013 BP failed in another attempt to register a green trademark. The case involved an application by BP for a trademark consisting of a green striplight affixed to the edge of the canopy over petrol pumps at vehicle service stations (Trademark Application 1016694).

Following another opposition by Woolworths (Woolworths Limited v BP plc [2013] ATMO 61), IP Australia refused BP’s application on the basis that the trademark was incapable of distinguishing BP’s goods and services as required under Section 41 of the act. In particular, IP Australia found that the trademark had neither acquired nor inherent distinctiveness, for the following reasons:

• A green striplight affixed to the canopy of a service station is not, to any extent, inherently adapted to distinguish one trader’s goods or services from those of any other trader. Something as ubiquitous, utilitarian and decorative as a coloured striplight on a shopfront could never be otherwise (ibid at [26]).
• BP’s evidence of prior use did not establish that it had used green striplighting affixed to the edge of a canopy of a service station as a trademark, nor that its green striplighting had come to be recognised as a trademark by consumers (ibid at [29]).

Past failures comes back to haunt BP
IP Australia’s most recent decision involved an application by BP to register a specific shade of green – Pantone shade 348C – in relation to fuel products and services provided at vehicle service stations (Trademark Application 909518).

The reasons for IP Australia’s decision (BP plc [2014] ATMO 59) suggest that historical events weighed heavily on the outcome of the case. Indeed, IP Australia acknowledged explicitly that the issues relevant to determining the latest application were “almost identical” to the issues that had been considered in the previous cases.

Nonetheless, there were two potential points of distinction to which IP Australia drew attention in its reasons. First, BP’s latest application was for a specific shade of green (ie, Pantone shade 348C) rather than the colour green per se. However, IP Australia found that this point made “little (if any) difference” to reaching the conclusion that the trademark was not inherently distinctive (ibid at [24]).

Second, the survey evidence on which BP relied – which was the same survey evidence that BP had used in the previous Federal Court case – took on a potentially different significance in relation to the latest application. This was because the first and second applications were for green trademarks limited to particular applications, whereas the latest application was not so limited. In addition, the latest application post-dated the survey evidence, whereas the first and second applications pre-dated it. This led IP Australia to find that some of the Full Federal Court’s previous criticisms of the survey evidence did not apply in relation to the latest application (ibid at [38]).

Despite this, the survey evidence still failed to convince IP Australia that the trademark had acquired distinctiveness. While it showed that some consumers “associated” BP with the colour green, such an association was not of itself sufficient to meet the test under Section 41(6) of the act (ibid at [39]).

As with the previous cases, the lack of both inherent and acquired distinctiveness proved fatal to BP’s latest application.

With no signs of an appeal by BP, IP Australia’s latest decision may well signal the end of the road for BP’s attempts to monopolise green branding in the service station market in Australia.