In Woolworths Limited v BP p.l.c.  ATMO 61, the Australian Trademark Office rejected a trade mark application by BP for the colour green for a neon strip light
BP and Woolworths have been entangled in litigation for many years in relation to trademark rights in respect of the colour green.
As trademark registration grants to the trademark owner the exclusive right to use the trademark as a trademark in relation to the goods or service for which it is registered, Woolworths were understandably concerned by BP’s attempts as Woolworths have been using red, green and white for it’s service stations since approximately 1986.
Had BP prevailed in their trademark registration this would threaten Woolworth’s right to use the trademark for their goods and services. BP’s trademark application may have been interpreted in a manner which might restrict Woolworth’s present and future use of the colour green in its service stations.
Although the registration of colour marks and other unconventional marks such as shape marks are specifically provided for in the Trade Marks Act, in order to be registrable, s42 of the Act provides that an application for the registration of a trade mark is not capable of distinguishing an applicant’s good or services in respect of which the trade mark is sought to be registered from from those of other traders.
In deciding whether a trade mark is capable of distinguishing goods or services from those of other traders, the trade mark must be inherently adapted to distinguish the goods or services from those of others. s42(3). If it is determined that it is to some extent inherently adapted to distinguish the relevant goods or services from those of others the Registrar must take into account other considerations to determine whether the applied for trade mark actually distinguishes the goods and/or services from those of others. .
A trademark application will be rejected if the mark is not “capable of distinguishing” the applicant’s goods or services from others traders might legitimately want to use in relation to their goods and/or services. .
As stated above while unconventional trademarks such as colours are registrable, as there are only a limited number of them, Courts are reluctant to grant colour trademarks due to the fact that colours would quickly become depleted. They are difficult to obtain registration for as trade marks.
The decision maker referred to principles in the earlier case of Philmac Pty Limited v The Registrar of Trade Marks  FCA 1551, in which the Court articulated four tests for when a colour mark would be considered capable of distinguishing goods or services.
1. If the colour does not serve a utilitarian function
2, If the colour doesn’t serve just an ornamental function without conveying any recognised meaning
3. If the colour doesn’t serve an economic function so that if it doesn’t occur naturally other traders would be put to additional expense to avoid committing infringement
4. if there is no proven competitive need to use the colour whether other traders might legitimately want to use it.
Applying these criteria, the decision maker concluded that the trade mark applied for was something utilitarian and decorative and couldn’t be deemed to be inherently adapted to distinguish one trader’s goods from another.
Having failed to prove this BP contended, unsuccessfully, that because it had made substantial use of the strip light it had over the course of time it’s trademark had become capable of distinguishing it’s goods from those of others.
To prevail on this argument, BP would have needed to have provided significant consistent acts of user of the mark as a trademark, in addition to evidence of goods sold under the trade mark applied for, and prove to the satisfaction of the court that it had educated consumers to the point where they would identify the mark’s use as trade mark use ie upon seeing the green strip light, consumers would automatically associate the mark with BP’s service stations.
The case highlights the fact that although unconventional trade marks are now provided for in the legislation and are becoming more commonly granted, they are not readily granted given the tests applied in assessing their eligibility.
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