Colour trade marks – still difficult to register


Under Australian trade mark law, a colour or combination of colours may be registered as a trade mark. However, a recent decision by the Trade Marks Office highlights some of the practical difficulties involved in trying to register a single colour as a trade mark.

The decision related to an attempt by BP to register as a trade mark a green strip light affixed to the edge of the canopy over the petrol pumps at vehicle service stations. This trade mark application was opposed by Woolworths. This decision forms part of a long-running dispute between BP and Woolworths over the colour green.

Before delving into the details of this decision, a short background explanation of Trade Marks Office practice is warranted. Although Australian trade mark law specifies that a colour or colours may be registered as a trade mark, the Australian Trade Marks Office invariably requires that evidence of use be provided in order to demonstrate that the trade mark has become distinctive of the owner or is capable of becoming distinctive of the owner. An application to register a single colour as a trade mark, in practice, will require significant evidence of use in order to convince the Trade Marks Office that a trade mark has become distinctive of the owner. The evidence of use will need to show that the colour is being used as a trade mark.

The evidence filed by BP was described as “voluminous”. However, the Hearing Officer found that BP’s evidence, including its survey evidence, did not lead to the conclusion that a green striplight affixed to the edge of a canopy of a service station either has been used by BP as a trade mark, and/or has been recognized by its customers as such. The Hearing Officer stated that the letters ‘BP’… still feature prominently in the normal service station get–up. This appeared to persuade the Hearing Officer that the green strip lights were not functioning as a trade mark.

BP’s evidence also showed that, at the filing date of the application, out of 1,224 BP branded service stations in Australia, 21 featured the green striplight. In 2010, that number had risen to about 230, around a quarter of the total number of BP service stations in Australia. As a result, the Hearing Oficer concluded that “it is small wonder that BP has not been able to provide convincing evidence that it has educated its customers to identify its use of the Green Striplight as trade mark use, when it has been unable to provide any evidence demonstrating that it has ever identified its use to its own staff in that way.”

Consequently, the application was refused.

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