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BP, Green and the Registration of Colour Trade Marks

BP’s applications to register certain shades of green as trade marks were refused by the Full Federal Court in the case of Woolworths v BP, which was decided on 4 September 2006. It was held that BP’s trade mark applications did not satisfy the ‘distinctiveness’ requirement in the Trade Marks Act 1995 (‘the Act’) as the colour green was not considered to be inherently distinctive.

At first instance, the court found that the colour green lacked any inherent capacity to distinguish BP’s goods or services. BP had to establish that due to the extent to which the colour had been used before the relevant filing date, the colour trade marks distinguished BP’s goods and services from its competitors.

Although BP had been using the colour since 1989, the court found that the colour green was not the only colour that BP had been using in relation to its business. Yellow was considered a recognizable part of BP’s corporate colours.

BP relied on survey evidence to show that the colour green was strongly associated with BP when comparing service stations. BP surveyed a number of interviewees by giving them a picture of a service station coloured predominantly green with no other colour and asking them to describe what they saw. 50% of the people surveyed immediately associated the picture with BP.

However, the full court held that the survey was not of assistance to BP as it did not lead to the conclusion that green alone or for that matter predominantly had been used as a trade mark.

The lesson learnt is that it is important that any colour trade marks are clearly and unambiguously described in the application and that supporting evidence should be tied to the precise mark that is applied for.

If you have any trade mark queries, please do not hesitate to contact us for further information.