Australia: It's not easy being green: IP Australia rejects BP's colour trade mark application

It was The Muppets' Kermit the Frog who memorably sang about how "it's not easy being green", but in a recent trade mark decision that is sure to make colour trade mark applicants sit up and take notice, BP has encountered another setback, in its quest to obtain trade mark protection for the colour in Australia.

A trade mark is a sign used in the course of trade to distinguish the goods or services of one trader from those of another. While the Australian Trade Marks Act 1995 (Cth) (the Act) allows for the registration of non-traditional signs such as colours, and the Australian Trade Marks Register includes a number of examples of colour trade marks that have obtained registration, the process of obtaining registration of colour trade marks remains far from easy.

IP Australia's stated position has been that "a single colour applied to the surface of goods that are normally coloured will generally be regarded as being devoid of inherent adaptation to distinguish". In practice, this has meant that an applicant has needed to:

• clearly describe the nature of the trade mark so that its scope is clearly defined
• demonstrate that they have used the colour as a trade mark, and
• demonstrate that the Australian public have come to understand and identify that colour with the particular goods or services provided by the applicant through the provision of evidence.

BP had initiated its application on 15 April 2002 and subsequently faced opposition proceedings brought by Woolworths Limited and revocation of acceptance. The trade mark was re-examined and IP Australia reinstated an objection to registration pursuant to section 41(6) of a now defunct version of the Act. The relevant section provided that if a trade mark was not to any extent inherently adapted to distinguish the designated goods or services, the applicant could attempt to establish that it had in fact distinguished the goods or services for which protection was sought, by reason of the extent to which it had used the mark before the filing date.

In support of acceptance and its position that Australian consumers understood that the use of Pantone shade 348C in relation to "Fuels (including petrol) provided through vehicle service stations" in class 4, "Vehicle service stations (refuelling and maintenance); vehicle service station services including vehicle lubrication, maintenance, cleaning and repair, vehicle anti-rust treatment, vehicle wash and vehicle tyre fitting and repair" in class 37 and "Take-away food services; provision of food and drink; snack-bars and cafes; all in convenience stores located on-site at vehicle service stations" in class 43, distinguished its goods and services from the goods or services of other traders, BP relied on the extensive evidence provided over the 12 years since filing the original application in 2002.

Instead of availing itself of the opportunity to provide written submissions in support of acceptance or put oral arguments to the Hearing Officer, BP relied on five declarations some of which the Hearing Officer noted were filed for the purpose of earlier proceedings. The declarations relied on by BP contained extensive evidence of its use of the colour GREEN including promotional material, survey evidence, substantial sales and advertising figures.

In rejecting BP's trade mark application on the basis that the evidence filed in support of the application failed to establish that Pantone shade 348C distinguished BP's goods and services as at the filing date, Hearing Officer Wilson concluded that "I do not find the evidence and the various contexts in which the Trade Mark has been applied demonstrate that the Trade Mark if used alone distinguishes the goods and services" [emphasis added] and notwithstanding an association in the public mind between the colour green and BP's service stations "...I am 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 [were] provided exclusively by the applicant."

Take away

The lessons to be drawn from BP's recent experience before IP Australia include:

• The path to obtaining protection of colour as a trade mark will remain a difficult one and require directed evidence demonstrating that the colour itself acts as a distinctive badge of origin for claimed goods or services.
• Use does not equate with distinctiveness. When providing evidence in support of an application for protection of a colour (or for any other type of trade mark) it is essential to remember that overwhelming evidence of use does not equate to overwhelming use as a trade mark. That is, as a distinctive badge of origin for the applicant in relation to the goods or services for which protection is sought.
• Brand owners should take every opportunity to persuade IP Australia of the merits of their position. While written or oral submissions perhaps may have not made any difference in this instance, these remain critical tools and opportunities to persuade IP Australia and the delegated officer of your position.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.