IP Australia has refused a long-running application by oil giant BP to register the colour green as a trade mark in relation to vehicle service stations.
The decision,1 handed down on 17 June 2014, comes more than 12 years after BP filed its trade mark application. It is unlikely the outcome will surprise many though, given BP’s past failed attempts to register “green” trade marks in Australia.
So how did BP’s past failures come back to haunt it in this latest case? To find out, we revisit the relevant history.
In July 1991, BP filed three applications to register the colour green as a trade mark. Each application was for the same trade mark but in respect of different goods and services, as accorded 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 (First Application).
In its First Application, BP represented the “green” trade mark it was applying for by the use of 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.”3
In October 1995, BP filed another trade mark application for the colour green in respect of services not covered by the First Application (Second Application). In the Second Application BP represented the “green” trade mark 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.4
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, had a penchant for using green coloured branding. In its opposition, Woolworth’s claimed that the “green” trade marks BP had applied for were not capable of distinguishing BP’s goods and services from the goods and services of other persons, as required under section 41 of the Trade Marks Act 1995 (the Act).5
Woolworths was initially successful in its opposition before IP Australia. BP then took the matter to the Federal Court where it was able to convince Finkelstein J, the judge at first instance, to overturn IP Australia’s decision and to allow the First and Second Applications to proceed to registration.6
BP’s success before Finkelstein J came largely on the back of evidence led by BP showing extensive prior use of the colour green in the get-up of BP’s service stations. In light of this evidence, Finkelstein J was satisfied that the colour green had become distinctive of BP’s goods and services by the time BP came to file each of the First and Second Applications. Finkelstein J decided that both applications could proceed to registration under section 41(6) on the basis that the trade marks had acquired distinctiveness in relation to BP’s goods and services by the relevant points in time.7
Crucially however, Finkelstein J 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). His Honour 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.8
Not to be outdone, Woolworths appealed Finkelstein’s J decision to the Full Federal Court, which handed down its authoritative judgment in September 2006.9
Relevantly, the key issue to be determined by the Full Court was whether Finkelstein J had erred in his approach to deciding that BP’s prior use of the colour green had the consequence of making the trade marks 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 Finkelstein’s J 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 (as Finkelstein J did), but to consider whether BP had used the specific trade marks the subject of its applications in such a way 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 trade mark. BP’s evidence did not however establish use of the colour green either alone or as a predominant colour combined with any other colour, as a trade mark. Accordingly, the Full Court held that neither of the “green-only” trade marks the subject of BP’s First and Second Applications had become distinctive of BP’s goods and services.
Without acquired or inherent distinctiveness,10 BP’s trade marks were held by the Full Court to be incapable of distinguishing BP’s goods and services, and were barred from registration under section 41 of the Act.
More recently, in August 2013, BP failed in another attempt to register a “green” trade mark. The case involved an application by BP for a trade mark consisting of a green striplight affixed to the edge of the canopy over petrol pumps at vehicle service stations.11
Following another opposition by Woolworths,12 IP Australia refused BP’s application on the basis that the trade mark was not capable of distinguishing BP’s goods and services as required under section 41 of the Act. In particular, IP Australia found that the trade mark had neither acquired nor inherent distinctiveness, for the following reasons:
IP Australia’s most recent decision involved an application by BP to register a specific shade of green, namely Pantone shade 348C, in relation to fuel products and services provided at vehicle service stations (Latest Application).15
The reasons for IP Australia’s decision16 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 discussed above in this article.
Nonetheless, there were two potential points of distinction that IP Australia drew attention to in its reasons. First, the fact that BP’s Latest Application was for a specific shade of green (namely Pantone shade 348C) rather than the colour green per se. IP Australia found however that this point made “little (if any) difference” to reaching the conclusion that the trade mark was not inherently distinctive.17
Second, the survey evidence the BP relied on – which was the same survey evidence BP 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” trade marks 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 predated 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.18
Despite this, the survey evidence still failed to convince IP Australia that the trade mark had acquired distinctiveness. While the survey evidence 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.19
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.
By Len Hickey
1 BP plc  ATMO 59
3 For completeness, this was the final endorsement that appeared in First Application after two earlier amendments were made by BP altering the wording of the endorsement. The making of these amendments (as well as the similar amendments made to the endorsement in the Second Application), was a separate substantive issue considered in the Federal Court proceedings mentioned in this article.
4 See footnote 3
5 In each of the cases discussed in this article, a previous version of the current section 41 applied. However, the same legal concepts regarding the capability of colour trade marks to distinguish apply equally under the previous and current versions of section 41.
6 BP plc v Woolworths Limited  FCA 1362
7 Ibid at 
8 Ibid at 
9 “Woolworths Limited v BP pic (No2)  FCAFC 132. An astute reader will note that the Full Court’s judgement post-dates BP’s trade mark application that is the primary subject of this article.
10 The findings of Finkelstein J regarding lack of inherent distinctiveness were not challenged by BP on appeal, and were thus left undisturbed by the Full Court.
11 Trade Mark Application 1016694
12 Woolworths Limited v BP plc  ATMO 61
13 Ibid at 
14 Ibid at 
15 Trade Mark Application 909518
16 BP plc  ATMO 59
17 Ibid at 
18 Ibid at 
19 Ibid at