Recent Developments 2005

Registering a colour as a trade mark

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  • Chapter 32 (Pages 691 –693 Trade Marks)

In BP p.l.c. V Woolworths Limited [2004] FCA 1362, the Federal Court approved the registering of a colour as a Trade Mark.

The Trade Marks Act 1995recognises that colour, scent, shape or sound can be a trade mark, provided it is capable of distinguishing, in the course of trade, the proprietor’s goods or services from the goods or services of other persons. However, colour marks are regarded as difficult to register, needing strong evidence of use of the mark over a long period.

In 1995, BP madean application to trademark the colour green in relation to petrol sales, but was refused by the Registrar of Trade Marks. Woolworths opposed the registration, because it wanted to be able to use green as part of its own plans to sell petrol.

The Federal Court found that registerability of a colour mark is to be approached in the same way as registerability of any other mark, noting the general acceptance of colour marks in the US and Europe.

Justice Finkelstein found that the particular green which BP wished to trademark was not inherently distinctive, so in order to be registered it needed to carry connotations with the company. He stated that,

"For BP to succeed in its appeals it must establish two things: first, that it has used the particular shade of green as a trade mark and, second, that in the minds of the public the primary significance of that shade of green, when used in connection with the supply of petroleum products or the provision of petroleum services, identifies the source of those goods or the provider of those services as originating from a particular trader, though not necessarily from an identified trader," he wrote in his judgment.

The Court accepted that the BP had been using the shade of green in question since 1923.

"So far as BP is concerned, there is simply no doubt in my mind that its get up, with its predominant use of green, is a badge of origin. Not only do consumers know that a predominantly green (in a particular shade) service station signifies a source, for the most part they also know that source to be BP," Justice Finkelstein found.