BP p.l.c. v Woolworths Limited

BP p.l.c. (formerly known as BP AMOCO p.l.c.) v WOOLWORTHS LIMITED V 891 of 2000 FINKELSTEIN J 25 OCTOBER 2004 MELBOURNE

On Appeal from the Decision of a Delegate of the Registrar of Trade Marks

BETWEEN: BP p.l.c. (formerly known as BP AMOCO p.l.c.)

REASONS FOR JUDGMENT 1 The applicant, BP p.l.c., is incorporated in the United Kingdom and is the parent of one of the world's largest oil and gas producing groups. The group sells by retail to the public, through thousands of service stations around the world, its own fuels and lubricants as well as other products. In July 1991, under one of its former names, the British Petroleum Company p.l.c., BP made, under the provisions of the Trade Marks Act 1955 (Cth), three applications for the registration (so it is said) of "the colour green" in Pt A of the Registrar of Trade Marks. Application 559837 was for registration in respect of goods in class 1 (hydraulic fluids, transmission oils and fluids and the like); number 559838 was for goods in class 4 (including industrial oils and greases, lubricants and fuels); and the last, number 559839, was for services in class 37 (principally maintenance, repair, lubrication for motor vehicles; vehicle service stations and automatic car washes). Following the commencement, on 1 January 1996, of the Trade Marks Act 1995 (Cth), which by s 243 made provision for linked applications to be dealt with as one, the three applications were dealt with in that manner as application 559837, though ultimately registration of the mark in class 1 was not pressed. In October 1995 BP made application under the 1955 Act, number 676547, for registration of "the colour green" as a trade mark for services in class 42 (which included wholesaling of fuels and oils, retailing services relating to filling stations and convenience stores located on filling stations). The result of s 240(1) of the 1995 Act was that both applications were to be dealt with in accordance with the 1995 Act. The applications were opposed by the respondent, Woolworths Limited, and were ultimately refused by the Registrar of Trade Marks. The present appeals are from those decisions of the Registrar. Although styled "appeals", these are proceedings in the court's original jurisdiction in which the parties are entitled to lead new evidence. This was done with the result that I must consider material which is very different from that which was before the Registrar. 2 Each of the July 1991 applications was made on the form prescribed by the Trade Mark Regulations then in force. Regulation 7(2) required a "representation" of the mark to be affixed as a schedule within the form of the application itself or, if that were not convenient, to be affixed on some suitable material and annexed to the form. The prescribed form required a "representation" of the mark to be "affixed to the Schedule to [the] application" or "annexed to [the] application". Each application had a representation of the mark affixed to the schedule. The representation was a square of green paper, each side being about 3.5 cm. Beneath the schedule appeared the following endorsement: "The trade mark is limited to the colour green as shown in the representation attached to the application form." The Registrar took the representation to indicate that the trade mark for which registration was sought was "the device of a SQUARE" and that the endorsement indicated that the device was green. The Registrar's view was made known to BP. 3 The 1995 Act recognises that colour, scent, shape or sound could be a trade mark provided it was capable of distinguishing, in the course of trade, the proprietor's goods or services from the goods or services of other persons. This follows from the meaning given to "trade mark" in s 17 and the definition of "sign" in s 6. Further, the Trade Mark Regulations made under the 1995 Act now make special provision for the contents of an application for the registration of a colour, scent, shape or sound trade mark. Regulation 4.3(7) provides that in addition to the representation of the mark required by reg 4.2(b), the application "must include a concise and accurate description of the trade mark". 4 Purportedly for the purpose of complying with reg 4.3(7), BP informed the Registrar that it would consent to an amendment of the endorsement as follows: "The mark consists of the colour green applied to a significant proportion of the exterior surface of the buildings, canopies, pole signs and other component parts of service stations used for the sale or supply of the goods or services covered by the registration." I suspect that one purpose for the proposed amendment, in addition to BP's desire to comply with the new regulations, was to get rid of the suggestion that the July 1991 applications were for the registration of device marks as BP intended to apply for the registration of colour marks. Be that as it may, following discussion with the Trade Marks Office BP agreed to amend its endorsement to read: "The trade mark consists of the colour GREEN as shown in the representation on the application as applied to a significant proportion of the exterior surface of the buildings, canopies, pole signs and other component parts of service stations used for the sale of the goods and the supply of the services covered by the registration." The differences between BP's originally proposed change and that ultimately adopted are immaterial. 5 Turning to application 676547, the schedule comprised a sketch of a service station together with a convenience store (a sort of mini-supermarket where motorists can purchase food items along with car accessories) and a car wash in the background. The fascias of the canopy above the petrol pumps, the convenience store and car wash, the front and back of the tanks, the rubbish bin, the poster board, the price board and the spreaders (the area on the petrol pump immediately above the glass display area) are all coloured green. There is an endorsement which reads: "The mark consists of the colour green applied to the exterior surfaces of the premises used for the supply of the said services as exemplified in the representation attached to the application." On 20 June 1997 the endorsement was amended to read: "The trade mark consists of the colour GREEN applied to a significant proportion of the exterior surfaces of the buildings, canopies, pole signs and other component parts of service stations used for the supply of the services covered by the registration, as exemplified in the representation on the application form". This amendment was made at the suggestion of the examiner who was of opinion that it was necessary to "describe [the colour] mark more precisely". 6 Application 559837 was accepted in its amended form and was duly advertised in the Official Journal on 17 July 1997. Application 676547 was also accepted and advertised on 17 July 1997. The advertisements came to the attention of Woolworths just as it was in the early stages of establishing its own network of service stations. Woolworths approached the Office and pointed to what it contended were deficiencies in the applications as accepted. The Office was persuaded that the acceptances were in error and on 26 September 1997 wrote to BP advising that the acceptances would be revoked in accordance with s 38(1)(a) unless the endorsements were amended. Possible amendment were suggested. The upshot was that BP applied to amend the endorsement on application 559837 to 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". The endorsement on application 676547 was also changed to: "The trade mark consists of the colour GREEN 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 the supply of the services covered by the registration, as exemplified in the representation attached to the application form." The amendments were advertised in the Official Journal on 30 October 1997 and on 16 October 1997 Woolworths' patent attorney lodged notices of objection. 7 The applications were heard by a hearing officer as delegate of the Registrar. The hearing officer found that the trade marks (in his view application 559837 was probably for a device of a green square) were not capable of distinguishing BP's goods or services and accordingly the applications were refused to be registered. It is the appeals from these decisions which are presently before me. 8 The main issues in these appeals are, first, whether the applications are "defective" for having been amended contrary to s 65 and, second, whether the marks are capable of distinguishing BP's goods and services as required by s 41 of the 1995 Act. In dealing with these issues I will put to one side s 33. The effect of s 33 is to create a presumption of registerability following the examination of an application. This was thought to be more desirable than the system which operated under the 1955 Act where the applicant had the onus of establishing that his mark should be registered. In this case the presumption will be of little assistance to BP. It simply has no role to play in determining whether an application for registration has been correctly amended. Nor can it override the Registrar's, and on appeal the court's, duty of deciding whether or not a mark is distinctive. Provided the amendments were validly made and distinctiveness is established, only then may it be presumed that the marks are capable of distinguishing the specific goods and services in question: see generally Working Party to Review the Trade Marks Legislation, Recommended Changes to the Australian Trade Marks Legislation, Canberra, 1992, para [1.3.1] whose views on this and other topics were incorporated into the 1995 Act. My approach conforms to that suggested in Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50, 56 but may be inconsistent with the views expressed in Lomas v Winton Shire Council [2002] FCAFC 413 at para [17]-[19], [23] and Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 59 IPR 318, 321-322. The latter two cases were dealing with a slightly different point and, in any event, may have impermissibly borrowed from patent law. 9 I will deal with the amendments first. It is necessary to have regard to some early history by way of background. The first modern trade marks legislation in the UK, and from which later legislation, including the Australian statutes, is derived, was the Trade Marks Registration Act 1875 (UK), 38 & 39 Vict c 91. It was said that "[c]olour' [was] not protected by [that] Act": In re Worthington & Co.'s Trade-Mark (1879) 14 ChD 8. Consequently, it was not possible to register a mark in a particular colour or colours. Perhaps the reason was that the official journal, the Trade Mark Journal, was only printed in black and white: Salaman, Trade Marks Their Registration and Protection in the United Kingdom and Abroad (1891) at 13-14. This situation was reversed by the Patents, Designs and Trade Marks Act 1883 (UK), 46 & 57 Vict c 57, the sixty-seventh section of which provided that: "[a] trade mark may be registered in any colour". Exclusive right to use that mark in that or any other colour was given to the registered proprietor: see generally, Sebastian, The Law of Trade Marks and Their Registration, (2nd ed, 1884) at 79, 84, 117-188. The ability to register a mark with limitations as to colour is now found in s 70 of the 1995 Act. An important point to make here is that s 70 and its predecessor sections, going back to s 67 of the 1883 UK statute, were all concerned with the registration of marks, that is to say device marks, in one or more specific colours. In re Hanson's Trade-Mark (1887) 37 ChD 112 is a case where registration of a mark for the well known red, white and blue label for French coffee was refused because of a lack of distinctiveness independent of colour. In any event, Kay J said (at 116) that it was not possible to register a mark which was only distinctive because of colour as "that would give you a monopoly of all the colours of the rainbow". It should be noted, however, that s 70 is not at all concerned with the registration of colour marks, in relation to which different considerations apply. 10 Section 65 restricts amendments to trade mark applications in two relevant respects. An amendment to the representation of a mark can only be made "if the amendment does not substantially affect the identity of the trade mark as at the time when the particulars of the application were published": s 65(2). An amendment to any other particular specified in the application can be made "unless the amendment would have the effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted": s 65(5). In this case the amendments to both applications were made to the particulars in those applications and not to the representations of the marks. As to the distinction between the definition of a mark (which may be taken to include its particulars) and the representation of a mark see Levi Strauss & Co v Kimbyr Investments Ltd [1994] 1 NZLR 332, 350-351 which, while concerned with a somewhat different legislative scheme, applies reasoning which is directly relevant to the 1995 Act. Reference might also be made to reg 4.3(7) in which a distinction is drawn between the representation of a mark and its description. Accordingly, only s 65(5) is engaged. 11 Turning to application 559837, for the purposes of determining whether the two amendments to the endorsement in the application were improperly made, it is necessary to decide precisely what was sought in the application in its original form. This is because s 65 invites a comparison (at least in the case of a first amendment) between the rights the applicant would have had upon the registration of the unamended application and those the applicant would have on the registration of the amended application. According to the hearing officer the application in its original form arguably sought "the registration of a device of a small green square". The hearing officer did not finally resolve this issue. According to Woolworths, the application is for a device. If this is the correct view the amendments to the application would clearly fall foul of s 65(5). Not only would they extend BP's rights but the first amendment would have introduced a wholly different mark by substituting a colour mark for a device mark. 12 I propose to approach the construction of application 559837 in a common sense way when deciding the type of trade mark that was the subject of the application. I do not subscribe to the view that some strict construction should be applied: compare Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816 at [40]. I agree with Woolworths that the application is to be construed from the perspective of an interested trader who wishes to gain an understanding of the trade mark register. The interested trader no doubt will examine the register with some care but, in the end, he (or she) will attempt to discern the identity of the mark without recourse to any special rules of construction such as those a lawyer might apply to statutes which take away important rights, patent specifications or to special provisions in agreements, like exemption clauses. 13 I cannot read the application as seeking the registration of a device mark (a square) limited to a particular colour, although I will not say that this view is at all fanciful. Indeed, the problem which has been presented here (that the representation of a colour mark, which must take some shape, could lead to the possible conclusion that what is being sought is a device mark for that shape) was anticipated by the Third Board of Appeal in Orange Personal Communications Services Ltd's Application [1998] ETMR 337 at [13]. However, I consider the application to be for the registration of a colour mark for the following reasons. First, the representation of the mark is not marked out as a square: the representation is a square piece of paper uniformly coloured in a particular shade of green and affixed (probably by glue) to the application form. Second, in order to characterise the mark it is necessary to have regard to the original endorsement. The endorsement is made up of two clauses: a main clause - "The trade mark is limited to the colour green"; and a subordinate clause - the colour green is "as shown in the representation attached to the application form". Read in isolation the main clause is a reasonably clear statement that the mark applied for is a colour and not a device mark. Read in isolation the subordinate clause does not detract from the main clause. Its function is to qualify the main clause by specifying that the colour mark is a particular shade of green, namely the shade shown in the representation. It is inappropriate, however, to read the two clauses separately; they must be read together in order to discover the true meaning of the sentence. When the endorsement is read in this way it does not produce a different result. Perhaps a little inelegantly, the endorsement makes clear to the reasonably interested trader that the mark is a colour mark and the colour is the particular shade of green in the representation. On this view, the amendments do not extend the rights claimed in the application in its original form. Each amendment restricts those rights by confining or limiting the mark. 14 It is unnecessary to spend much time with the amendments to application 636547. The original endorsement claimed the colour green as "applied to the exterior surfaces of the [service station] premises as exemplified in the representation attached to the application". On one view, the application of the colour to the premises is without limitation. If registered, a competitor would infringe the mark if he applied the colour to the whole of his service station premises, to only a small proportion of those premises or to anything in between. The amendments do no more than cut down the otherwise broad operation of the original endorsement by restricting, in descending order, the application of the colour green, and therefore the definition of the mark, in the first amendment to "a significant proportion of the exterior of the [premises]" and, in the second amendment, "applied as the 'predominant colour' of the fascias of [the premises]". These amendments clearly restrict the ambit of the mark. 15 I now turn to the principle point on these appeals, namely the distinctiveness of the marks. Section 41 says that in deciding whether a mark is distinctive (that is, capable of distinguishing the applicant's goods or services from those of others) the Registrar must consider whether the mark is inherently adapted to distinguish the applicant's goods or services (s 41(3). If not the Registrar must then decide whether the mark is to "some extent inherently adapted to distinguish" those goods and services and if it is, whether its "use or intended use" will distinguish the applicant's goods or services: s 41(5). If the mark is not inherently distinctive the Registrar must consider whether the mark is distinctive in fact: s 41(6). If the mark has the capacity either inherently or by use to distinguish the applicant's goods or services, it may be registered. This position is different from the situation which existed under the repealed Act. To obtain registration in Pt A under the 1955 Act (and all earlier legislation) it was necessary to show some degree, albeit small, of inherent adaptedness to distinguish: The Registrar of Trade Marks v Muller (1980) 144 CLR 37, 42. This requirement has been removed. Now marks which distinguish by reason of extensive use are registrable. 16 How then does one ascertain whether a colour distinguishes the applicant's goods or services? One starts from the position that the 1995 Act specifically contemplates that a trade mark may be a single colour. Then one notes that the 1995 Act does not suggest that the registerability of a colour mark is to be approached any differently from the registerability of any other mark. In any event, even under the former legislation a colour mark could be registered, at least in theory: Application of F. Reddaway & Co, Limited [1914] 1 Ch 856; Smith Kline & French Laboratories Ltd. v Sterlin- Winthrop Group Ltd. [1975] 1 WLR 914; Parke Davis and Company's Trade Mark Application [1976] FSR 195; compare In re Hanson's Trade Mark (1887) 37 ChD 112 which, surprisingly, was not mentioned in the other cases. 17 This is now the accepted position in most jurisdictions. Take the United States for example. For a long time there was doubt about the capacity of colour per se (at least a single colour) to serve as a trade mark. Three arguments were employed against the possibility of a single colour trade mark. The first was the colour depletion theory. Its premise was that the number of colours is finite and that if one trader were allowed to appropriate one colour, and others followed suit, later traders would have no colours left for their own goods or services: Campbell Soup Co. v Armour & Co. 81 F Supp 114, 119 (1948), citing In re Hanson's Trade Mark (1887) 37 ChD 112 as the case which first advanced this theory. The second theory was known as "shade confusion". This theory was based on a fundamental premise of trade mark law that the use of similar marks on the same or similar goods will not be allowed if it is likely to cause confusion. One aspect of the "shade confusion" theory was that it would give rise to degrees of difference between shades of colour marks which were simply too difficult for the court to handle: W. H. Brady Co. v Lem Products, Inc., 659 F Supp 1355, 1366 (ND. Ill. 1987). The third argument was based on functionality. This theory asserts that where a colour is the natural colour of a product, or affects the cost or quality of a product, then this characteristic should not be exclusive to one trader: William R. Warner & Company v Eli Lilly & Company & Co 265 US 526, 529, 531-532 (1924); Sylvania Electric Products, Inc, v Dura Electric Lamp Company 247 F 2d 730, 731-732 (3d Cir, 1957). Doubt was cast on these theories by the Court of Appeals for the Federal Circuit in In re Owens-Corning Fibreglass Corporation 774 F 2d 1116 (Fed Cir, 1985). Ultimately the theories were rejected by the Supreme Court in Qualitex Co. v Jacobson Products Co., Inc 514 US 159 (1995). Qualitex registered the green-gold colour of its dry cleaning press pads and sued Jacobson for infringement. Jacobson filed a counterclaim for cancellation of the trade mark, alleging that Qualitex could not obtain registration of a mark for colour alone. The opinion of the court was delivered by Breyer J. He said (at 160) that the Trademark Act of 1946 (Lanham Act) permits registration of a trade mark "that consists, purely and simply, of a colour". He rejected each of the arguments in favour of a per se prohibition. He found (at 168) the colour depletion theory to be unpersuasive because it relied upon occasional problems to justify a blanket prohibition. He rejected (at 167) the shade confusion theory because courts were often called upon to decide difficult questions about whether two words or phrases or symbols were sufficiently similar to confuse buyers and would have no more difficulty in deciding whether two colours were confusingly similar. As regards functionality, Breyer J said (at 169) that the doctrine could not be an absolute bar to the use of colour as a mark. He explained that if a colour has a functional use (a point that has particular relevance when colour is used on the product itself), it would not serve as a trade mark. On the other hand, he explained how colour is not always essential for a product's use or purpose and does not necessarily affect its quality or cost. In these circumstances there is no reason not to register the mark. In addition, Breyer J suggested (at 163) that a colour mark could never be inherently distinctive; colour could only be protected by evidence of acquired distinctiveness: that is by the acquisition of a "secondary meaning". In Wal-mart Stores, Inc v Samara Brothers, Inc., 529 US 205 (2000) the Supreme Court (at 211-212) confirmed that a colour mark could never be inherently distinctive. 18 A broadly similar approach has been taken in Europe. The 1988 Directive for the Harmonisation of the Trade Mark Laws of the member states has a broad definition of a trade mark which does not mention colour. The 1995 Community Trade Marks Regulations allow for the registration of Community trade marks - that is, trade marks which give proprietors exclusive rights throughout the European Union, and which sits side by side with national registrations. The CTMR does not expressly include colour marks, however, it is accepted that colour marks, including single colour marks, can be registered. In WM. Wrigley JR Company's Application [1999] ETMR 214 the Third Board of Appeal of the Office for Harmonisation in the Internal Market said (at para [21]) in relation to the claimed mark's (light green) ability in that case to be distinctive: "A colour per se normally lacks those properties. Consumers are not accustomed to making an assumption about the origin of goods on the basis of their colour or the colour of their packaging, in the absence of a graphic or textual element, because a colour per se is not normally used as a means of identification in practice. That rule may not apply in the case of, first, very specific goods for very specific clientele and, secondly, a colour exhibiting a shade which is extremely unusual or peculiar in the relevant trade." In this passage the Board of Appeal is suggesting that a colour may be inherently distinctive, though only in limited circumstances, a view with which I do not agree. 19 Even accepting that colour may be inherently distinctive, however one tests for inherent distinctiveness, the shade of green which is the subject of the present applications would not meet that test. According to the traditional approach, the inherent distinctiveness of a mark (that is whether a mark is adapted to distinguish) is to be determined by reference to the mark itself, that is independently of its use as a mark: In re Leopold Cassella & Co. Gesellschaft M.B.H [1910] 2 Ch 240, 244-245; WELDMESH Trade Mark (1966) 83 RPC 220, 225; Burger King Corporation v The Registrar of Trade Marks (1973) 128 CLR 417, 424. The test is a negative one. In Yorkshire Copper Works Limited's Application for a Trade Mark (1953) 71 RPC 150 Lord Simonds said (at 154): "it is perhaps easier to define 'inherent adaptability' in negative than in positive terms; in other words, I would say that a geographical name can only be inherently adapted to distinguish the goods of A when you can predicate of it that it is such a name as it would never occur to B to use in respect of his similar goods." This mirrors the position taken by Lord Parker in In the matter of Applications by W. and G Du Cros Ld. for the Registration of Trade Mark's (1913) 30 RPC 660,672 where he said that it: "[l]argely depend[ed] upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods." This approach has been followed consistently in Australia: see by way of example Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 514. 20 A negative test is not always satisfactory. Often it would be more useful to give a positive meaning to the expressions "inherently distinctive" or "inherently adapted to distinguish" in order to test the facts in a particular case. I think that this can be done, as it has been, in the United States. There, as here, if a mark distinguishes particular goods or services as being from a particular source, the mark will be "inherently distinctive" and thus qualify for registration. The test is whether "[its] intrinsic nature serves to identify a … source": Two Pesos, Inc. v Taco Cabana, Inc 505 US 763, 768 (1992). The classic formulation of the different categories of distinctiveness in relation to marks is found in the judgment of Judge Friendly in Abercrombie & Fitch Company v Hunting World, Incorporated 537 F 2d 4, 9-11 (2nd Cir 1976). The categories are: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful. Generic terms can never be trade marks. Descriptive terms can, but only if they have acquired a secondary meaning. Suggestive arbitrary or fanciful terms are inherently distinctive: Two Pesos, Inc. v Taco Cabana, Inc 505 US 763, 768-769. See also Gruner + Jahr USA Publishing v Meredith Corporation 991 F 2d 1072 (2nd Cir 1993). In the United States, lawyers appear to have no difficulty in applying these concepts. Nor do jurors before whom most trade mark cases are tried. In jury cases it is necessary for the judge to instruct the jury as to the meaning of distinctiveness in a way that can be readily understood. The following is part of the instruction given in Big O Tire Dealers Inc v The Goodyear Tire & Rubber Company, an Ohio Corporation 408 F Supp 1219, 1243 (DC Cir 1976); affirmed 561 F 2d 1365 (10th Cir 1977). It is clear, concise and comprehensible. "In trademark usage, words can be classified according to the degree of their distinctiveness. A 'coined' word is an artificial word which has no language meaning except as a trade mark. EXXON is a coined word used by an oil company. A 'fanciful' word is like a coined word in that it is invented for the sole purpose of functioning as a trade mark and it differs from the coined word only in that it may bear a relationship to another word or it may be an obsolete word. FAB is a shortened version for fabulous and is a fanciful word used for detergent. An 'arbitrary' word is one which is in common linguistic use but when used with the goods in issue it neither suggests nor describes any ingredient, quality or characteristic of those goods. OLD CROW for whiskey is an example of an arbitrary word. A 'suggestive' word is one which suggests what the product is without actually being descriptive of it. STRONG-HOLD for threaded nails is suggestive of this superior holding power. A merely 'descriptive' word is one which draws attention to the ingredients, quality or nature of the product. TENDER VITTLES as applied to cat food is descriptive. A 'generic' word is one which is the language name for the product. BUTTER is the language word for butter. There can be no trademark rights in a generic term. They remain in the public domain as part of our language. The right to protection of a trademark comes from its use to identify the product. We speak of strong and weak marks in terms of the amount of use necessary to create protective rights. Words which are coined, fanciful or arbitrary are distinctive almost from their first use. Suggestive words are also protected as trade marks when used distinctively for particular products. Words which are merely descriptive do not obtain protection solely from the use as a trade mark. Such words must first acquire distinctiveness from the effect of the owner's efforts in the marketplace. This is what is called the development of secondary meaning; that is a merely descriptive term used as a trademark must have been so used that its primary significance in the minds of the consuming public is not the product itself but the identification of it with a single source." 21 A similar instruction was given in B & B Hardware, Inc., v Hargis Industries, Inc 252 F 3d 1010, 1012 (8th Cir 2001). See also U.S. Search, LLC v US Search.com Inc 300 F 3d 517, 524 (4th Cir 2002) where the Court of Appeals explained that: "Coppertone®, Orange Crush® and Playboy® are good examples of suggestive marks because they conjure images of the associated products without directly describing [them]. … Examples of merely descriptive marks include After Tan post-tanning lotion, 5 Minute Glue and Yellow Pages phone directory." 22 It is worth making two observations about these classifications before moving on. The first is that they are not intended to create hard and fast divisions, as Friendly J himself pointed out. Indeed, some judges have suggested that correctly categorising marks on this scale is a "slippery business": Western Publishing Company Inc v Rose Art Industries, Inc 910 F 2d 57, 60 (2nd Cir 1990). The second observation is that while the classifications in Abercrombie & Fitch Company v Hunting World, Incorporated were developed in relation to word marks, they are capable of application, with some adjustment, and are in fact applied, to all marks (word or device) as the basic test of distinctiveness: Two Pesos, Inc. v Taco Cabana Inc. 505 US 763 (1992); J McCarthy, McCarthy on Trade Marks and Unfair Competition, Vol. 2 at s11.2; Restatement Third, Unfair Competition s 13. This is not to suggest that the adoption of the classifications to marks other than word marks is not without its critics: see by way of example Joan Dillon, "Two Pesos: More Interesting For What It Does Not Decide" 83 TMR 77 (1993); Vincent Palladino, "Trade Dress After Two Pesos" 84 TMR 408, 409 (1994): (the Court's "rather loose language [in Two Pesos] overlooks the difficulty of applying the spectrum of distinctiveness to the realm of trade dress, where the meanings of the categories … are ill-defined and may be hard to follow."); Anthony Fletcher, Annual Review, 83 TMR 904, 1054 (1993):("The High Court gave no clue how to apply the concepts embedded in the [arbitrary to generic] spectrum, which was developed for words, to shapes, colors and the various other types of trade dress."); Anthony Fletcher, Annual Review, 84 TMR 635, 709 (1994): ("Courts are still coming to grips with the Supreme Court mandates in Two Pesos that they categorize trade dress in the generic to fanciful spectrum, when the categories depend on verbal meaning."); J. Gilson, Trademark Protection and Practice, 7.02(7)(d) (1992) ("… with trade dress there are no dictionaries to consult, and often little more than the 'eyeball test' to apply."). Be that as it may, colour is regarded as a descriptive mark which could only by use indicate source: Qualitex Co. v Jacobson Products Co Inc 514 US 159, 163 (1995) citing as examples of colour marks which have acquired distinctiveness by secondary meaning, pink on a firm's insulating material and red on the head of a large industrial bolt. 23 Whichever test is applied the colour green (in the particular shade shown on the applications) is not inherently distinctive of BP's goods and services. Applying the negative test, green is not inherently distinctive because, as I will soon show, it is a colour used quite innocently by other owners and operators of service stations. The colour is not inherently distinctive according to the positive test because the colour is simply descriptive. The marks will only be distinctive of them if, by the filing date of each application, the colour had acquired a secondary meaning. Accordingly, 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. 24 The evidence must be scrutinised very carefully when it is said that a single colour has been used as a trade mark. Most objects have to be some colour. So merely applying a colour to a product will not act as an identifier for that product. In deciding whether colour functions as a trade mark it is necessary to determine whether the trader has used the colour in a way that informs the public that the product emanates from a particular source. Put another way, colour must be used to distinguish products and not as mere ornamentation or decoration. Moreover, I propose to begin from the premise that in most cases the public will consider colour as ornamentation and not as indicating a particular origin. For that reason I will require substantial evidence to show acquired distinctiveness or secondary meaning for a single colour. Without wishing to be repetitive (but the point is so important that some repetition is in order), what is required is the promotion of the colour itself in a way that it attracts attention, just like the established institution of advertising, so as to lead the public to associate the colour with the products and services in question. 25 Now we can go to the facts. They largely concern service stations. A service station is an instantly recognisable structure. Some say it is a triumph of modern design. One author has described it as "[a] delicate composition of solids and voids, machines and alphanumeric characters, it is one of the purest creations of technology in the public realm". No author cited, "The Last Modern Project" (1993) 26 World Architecture 82. A different view was expressed by the fictional character Miss Queen in the novel Hangman's Holiday. At one point she was asked to recall which of two service stations she had used. She describes "one of those dreadfully ugly places, made of corrugated iron and painted bright red" and continued "I don't think they should allow them to put up things like that". The second station was "another red corrugated garage, more boards, more petrol pumps and a clock": D L Sayers, Hangman's Holiday (1933) 120, 122. The service station is the successor of the bicycle repairer, the carriage-maker and the haulage contractor, who in the early days of the motor car sold petrol from their workshops in two gallon cans, and of the roadside petrol pump invented by S F Bowser & Co of Fort Wayne, Indiana. The first service station was opened in the United States in 1905. The early station was a cheap affair, often made of corrugated iron. Soon, local authorities began to control its appearance. Architects were called in and applied principles of modern architecture to its design. Service stations then became functional in terms of their style and construction as well as pleasant to the eye: T. Lord, "The development of the petrol filling station, 1895-1939", in B Brown (ed) Explorations in Motoring History (1997) at 47. 26 For the most part service stations were, and still are, owned and operated by, or tied to, the major oil companies. It was necessary for these companies to identify, by some method, their particular service stations. Initially, the early petrol pump (in particular the glass illuminated petrol pump globe) was recognised as an excellent means of advertising. The oil company's logo was placed on the pump. The emergence of service stations led oil companies to apply their colours and logo to parts of the structure in an effort to identify themselves from their rivals. If not for some means of identification, one service station would be indistinguishable from another. Moreover, not only was the get-up (or style) of a service station designed to distinguish between rival producers, the designer tried to attract the attention of the motorist travelling along the roadways. The greater the distance at which the motorist would notice a particular brand of service station, the longer he had to decide to stop. Moreover, the more attractive the get-up the more likely it was the driver would stop. 27 BP has a logo which it displays on its service station. BP's logo is a shield. It can be traced back to 1920 when, according to legend, a Mr A R Saunders won a staff competition to design the first BP logo. The logo consists of the letters "BP" in upper case on a background which is in the shape of a shield. At first the letters appeared in red within a black shield. The colours were changed to green and yellow in 1923 when two senior BP executives, who were lunching in Paris, decided to use those colours as BP's corporate colours. According to a BP publication "[t]he bright colours suited their moods and the prevailing spring weather …". 28 BP also made use of colour in other ways. As early as 1927 BP used the colour green in its advertising. This may have come about as an attempt by BP to distance itself from the attacks made by the President of the Royal Institute of British Architects who complained of the "hideous red, blue and yellow [petrol] pumps". In June 1927 BP announced that it would change the colour of its pumps "from red to an attractive shade of green" thus providing "a pump that will harmonise with the beauties of rural surroundings": see D Jeremiah, Filling Up: The British Experience, 1896-1940 (1995) 8 (2) Journal of Design History 97, 103. By way of example, the front page of the September 1927 edition of The Motor Cyclist Review shows green coloured BP petrol pumps with the slogan "Get the holiday spirit from the Green 'BP' pump". An advertisement from Motor Commerce for February 1928 informed readers "why Motorists seek Green 'BP' Pump". BP has used the letters "BP" and the BP green and yellow shield logo in Australia since 1954 when it entered the local market on its own account. Green and yellow were adopted as the corporate colours of BP Australia in 1956. 29 In the second half of the twentieth century oil companies began aggressively to promote their brands, beginning in the mid 1950s. Petrol rationing, which had been introduced during World War II, had come to an end. The motor car was becoming the principal means of transportation for most people in the industrialised world. This period also saw the beginning of mass advertising. 30 In the late 1950s BP decided to standardise the image of its service stations around the world. With the advent of global communications and world travel, BP saw the importance of adopting "an international and uniform image across the whole of BP's business so that consumers the world over [could] easily recognise the brand and know they can expect and receive high quality service from BP wherever they are". To achieve this purpose BP set up a committee to set visual standards for the group. These standards were to be BP's method of regulating the use of the BP shield and its get-up. BP service stations around the world were required to observe strictly the standards to ensure consistency. 31 In 1960 BP adopted the so called "New Look" design created by the French design company Compagnie D'Esthetique Industrielle. The "New Look" entailed the by now familiar BP green and yellow colours being seen against a white background. Red was also incorporated into BP's new look. Compagnie D'Esthetique Industrielle described the way that the four colours would be used as follows: "WHITE is used as the underlying colour of the entire façade of the main building and for outbuildings. A clear, clean, crisp white. YELLOW - the dominant colour - is used in a distinctive horizontal band along the top of the building. It is used wherever the effect of a horizontal stripe is needed. BP's vivid New Look yellow. GREEN is used to give a secondary colour accent to the garage. Normally it's used in a vertical panel at the main approach corner of the building. RED is used to supplement the scheme by giving a different colour note to the main interior wall. - (The one seen by the motorist as he drives in) - of the sales room." BP's first full set of Visual Standards described how the "New Look" was to be implemented. Below is an extract. "EXTERIOR Exterior décor is to present a horizontal band of BP Yellow, in association with a vertical panel of BP Green, on an otherwise over-all BP White structural finish (excluding glazing and a black skirting strip). … Although, on certain stations, it may be essential to apply more than one green panel, in order that the complete 'family look' theme can be seen by vehicles approaching from both or all directions, only one green panel must be visible from any viewpoint. It should be remembered that, to achieve the best effect, an adequate white surface is essential - the effect to aim at is one of a white station carrying the yellow and green 'family look' theme. … Façade wall-signs As a general rule, BP (trade mark) wall signs should not be exhibited on facades of sale points at which a major BP sign adequately signalises / identifies the station to approaching drivers. … INTERIOR …. Sales/Office areas Ceilings - BP White. … Walls, other than in sales room: All BP White Doors, door frames, window frames, etc: All BP White (including those on the red wall). Skirting - or base -board (approximately 20 cm./ 8in high): Black - gloss finish. Sales-room flooring: should be of medium grey, compatible with BP Grey. Other colours, or multi-coloured floor coverings should not be used. Furniture: Any existing painted furniture should be re-painted in BP Grey. Coloured (as distinct from bright metal) surfaces on new furniture should be of - or compatible with - BP Grey." 32 Following the implementation of the "New Look", green, yellow and white appeared in BP's get-up in varying proportions. Photographs taken of BP service stations in Australia between the early 1960s and the late 1980s show that the canopy above the dispensing islands was generally painted white with a green and yellow horizontal parallel stripe on the fascia. In one photograph the canopy is painted white and has no stripes. The poles holding up the canopy are painted white. 33 In 1986, BP decided to change the appearance of its service stations; that is, it decided to change its "roadside presence". The project was called "Project Horizon". A number of reasons explain the timing of the project. First the existing get-up or design had been applied inconsistently around the world. Second, BP's major competitors, particularly Esso, Shell and Mobil, had either changed or were in the process of changing the appearance of their own service stations. The objective of Project Horizon was to create a standard image for all " BP facilities, vehicles and products worldwide governed by a single set of rules for its consistent application, which ensured that each element was immediately recognisable as belonging to the same BP global business". 34 Addison Design Consultants and MAS Research Marketing & Consultants Limited were appointed to research and assess BP's position in relation to its competitors. MAS carried out some pre-design research. Its research methodology included interviews with groups of motorists, including motorists in Australia. MAS' main findings were that: there was little differentiation between BP and its competitors apart from colour; pole signs and canopy edges were "critical communicators"; colour was intrinsically more important than architecture; recognition of BP services stations in Australia was "strong" because of its use of the colour green; and that the colours green and yellow together with the shield were a "strong BP equity", by which I take to mean that there was marketing value in these colours. MAS also found that in terms of speed of recognition, BP scored higher than Shell and Esso (two of its main competitors) because of its use of the colour green. To quote from the MAS' report: "Colour is the major differentiator … almost the only real differentiator. Apart from colour, the brands are thought to look much more similar than they are different. Irrespective of any underlying communication values, BP appears to have a significant advantage in having a different colour scheme, at least as far as recognition is concerned. Green and yellow are a BP property and hence a BP equity. Green is the unique element, yellow the accent …." 35 In August 1987, Addison suggested that BP build on its reputation and recommended that the BP brand be developed by "an updated design and colour system". This was followed by a suggestion in 1988 that BP adopt the colour green as its corporate and retail colour. 36 The Project Horizon Steering Group (which had been established in April 1987 to oversee the project) built a mock-up service station to experiment with suitable designs which would best set off the colour green. The Steering Group considered the relative impact of BP's four "key communicators": the canopy, the pole sign, the petrol pumps and the convenience store and car wash. Of these, the canopy and the pole sign were seen as the most important, as they were the two elements of a service station seen first by a motorist, especially when travelling at speed. Accordingly, the design was arranged so that before the motorist read the BP name and logo he would see the canopy and pole sign and quickly identify the site as a BP site from the colour green alone. 37 At first, there was some resistance in the United States to the use of the colour green. In the mid 1980s BP had acquired Standard Oil of Ohio (Sohio). BP's US management considered that there was strong "equity" and marketing value in Sohio's blue coloured service stations. Sohio had only recently adopted a new blue and silver design which incorporated "a new look bullnose canopy with a red neon stripe, and silver monocolumns around the pump units …". Mr Perry, the Project Manager of the Steering Group, recounts how the US people changed their minds: "The people in management at BP in London and at BP US in Cleveland, Ohio, USA accepted that there was global research which confirmed that BP had equity in the colour green and agreed that BP would be the brand to be used worldwide. I therefore suggested to Russell Seal, Chief Executive of BP Oil International, that a trade off could be made with BP Oil in the US. BP would adopt Sohio's new Bass Yager site design with the bullnose and monocolumns globally if the USA would re-image to BP's new green livery. I arranged for a Sohio site in Portsmouth, Virginia, USA to be painted green. I and the Project Horizon Steering Group arranged for all the Marketing Managers of BP US to be taken there, and the site looked stunning. They saw this new green station which was unlike anything else in the industry and they said "That's it". The Americans realised that their sites looked more distinctive in green - most of the competition used blue and red. The differences between BP London and BP US were healed and the Americans agreed to BP London's proposal to adopt green for BP globally. That was in the second half of 1988. It was a defining moment when the US team realised how impressive the image was in green. It was a major achievement." 38 In early 1989, the design and colour of BP's new green service stations were approved. The colour green (the shade chosen was Pantone 348C) would become the predominant colour applied to the buildings, canopies, pole signs, petrol pumps and other components of its service stations. As a BP corporate brochure issued at the time explained: "Green will became the dominant colour of the group, creating a particularly striking presence at all points of sale and service. … Green is a colour unique among the oil majors. In BP's case it continues and emphasises a theme established in earlier days of the company's history. Changes in the way the shield is applied and its colour scheme are designed to reflect both the company's outstanding heritage and its clear focus on the future. Fresh shades of green and yellow are introduced to give a richer, more friendly feel to the logo which from now on will always be set on a green background. 39 BP devised a strict procedure for the implementation of Project Horizon. The implementation occurred in two stages. First there was the re-imaging of existing service stations. Then there was the building of new sites. Three levels of re-imaging for existing stations were laid down. Level 3 was the top re-imaging standard. Service stations in this level adopted a new bullnose canopy edge, stand alone petrol pumps with larger spreaders, back lighting, and a new identification sign. Level 3 was applied to key company owned sites in prime, highly visible locations. Service stations re-imaged to level 2 had flat faced canopies and stand-alone petrol pumps with spreaders above the main identification sign as well as additional signage. Level 2 was applied to small towns and rural sites which did not have such a substantial patronage to justify the cost of top level re-imaging. Level 1 was for smaller sites and was confined principally to re-painting. All levels had the following common features: The colour green was to be applied to the canopy, fascias, main identification sign, all auxiliary signage, the car wash and convenience store fascia. The fuel dispensing area in the service station was also to be predominantly green. The main identification sign would be between 5 to 10 metres high to attract the eye of the motorist. The purpose was that from a distance the only brand identifier a motorist would distinguish would be "the colour green applied to the [sign] and the canopy". 40 BP produced a detailed instruction guide, referred to as the "Scope of Works", for the implementation of Project Horizon. The main purpose of the Scope of Works was to ensure the uniform re-imaging of BP service stations worldwide. By way of example, the following instructions related to the re-imaging of the canopy fascias at Level 1 service stations: "Fascia illumination is treated on a "like for like" basis. Visual standards rules as follows: Existing illumination fascias are treated as Level 2 with flexface. Non illuminated fascias are treated with controltac pre screened with simulated BP Electric Green line. Existing leading edge light boxes are treated with new flexface skin in opaque green with back lit yellow BP, (NOT canister) and green line. In these cases again, the fluorescent tube layout needs to be adjusted to give optimum illumination effect to BP and the line. Edge trim and all exposed surfaces (including light box) painted BP Green". 41 Between July 1989 and July 1991 approximately 1200 BP service stations in Australia adopted the new get-up. By December 1995, a total of 1356 retail service stations had been re-imaged. The amount BP spent on the project is substantial: between July 1989 and September 1996 it spent $50,564,909 with a further $91,898,317 being spent since then. The worldwide budget for Project Horizon was US$500 million. 42 BP widely promoted its new "green" image. Every television advertisement screened in Australia since late 1988 has ended either with a green BP flag or a road which turns into green. In the print media, BP's "Easy in, Easy Out" advertisement referred to "BP's new green stations". A later "Easy In, Easy Out" advertisement had the following text: "At BP the new green stations keep the wheels turning for more and more motorists every day". The "Stop at the green light" advertisement advised motorists that there was more "to our petrol stations than their new green look". The advertisement invited motorists to pull in "[n]ext time you see the green light". In all these advertisements, BP stations were featured in their green colour. 43 For the purpose of deciding what aspect, if any, of a get-up adopted by an oil company is distinctive so as to qualify for registration as a trade mark, it is helpful to examine how other oil companies marketed and promoted their brands. Reference will be made in the first instance to Shell because it has a similar presence in Australia to BP. As a point of comparison I will also discuss Texaco, although much of the evidence concerns their activities in the United Kingdom. 44 Since 1900, Shell has used a stylised shell as its trade mark. The following is a brief history of that mark. Until 1948 the mark was coloured blue and white. In that year, the colours were changed to red and yellow. Red was the predominant colour on the shell; the colour appeared on the outer edges of the shell and the inner area was yellow. The shell appeared against a red background between 1961 and 1971. In the period between 1955 and 1971 the word "SHELL" appeared on the mark. In 1971 the predominant colour of the mark was changed to yellow. 45 In 1961, Shell decided to standardise its corporate identity. Shell management were convinced that "the best way to do it…", that is to achieve that objective, 'is to do it with COLOUR": cited in H. Jones, Packaging Petroleum - A History of Petrol Station Design in Britain 1955-1995 (Dissertation, May 1998) at 87. Shell engaged Compagnie D'Esthetique Industrielle to devise its new image. This was the same organisation that BP had engaged for its "New Look" project. Compagnie D'Esthetique Industrielle devised a "contemporary white, silver grey, lemon yellow and splash of red" colour scheme that was to be applied to Shell service stations. In 1962 or 1963, Shell launched "Operation Rainbow" to determine more specifically how the new colour scheme was to be used. In due course Shell decided that its yellow shell mark would be its primary identifier. The second most noticeable identifier was to be the word SHELL, either as red san-serif letters attached to, or painted on, the facia of each service station's white canopy. White and grey were employed as background colours to allow the red and yellow to stand out. 46 Shell changed its get-up in the late 1970s. This change was known as "Visual Manifestation Two". Some of the changes were: a thick red and yellow horizontal stripe was incorporated on the canopy of the service stations; the poles holding up the canopy were painted white; and the shell mark was encased in a solid black signage column. 47 In 1994, Shell launched its "Retail Visual Identity" project, another design change which had been developed by Addison, which, it will be recalled was the design company retained by BP for Project Horizon. Indeed, many of the people who had worked on Project Horizon now turned their efforts to Shell. Shell conducted market research in twenty-seven countries. The results indicated that red and yellow were popular colours. Addison's design for Shell involved a revision of the colour of the Shell mark, a stronger colour scheme and a covered illuminated canopy fascia. The shell mark (which was in a three dimensional form) became predominantly yellow with an outer red edge. The mark was located on a white surround, which was held up by a grey structure. Convenience stores were painted white. The canopy above the pumps was painted yellow with a freestanding three-dimensional red line. The Shell mark was attached to the canopy. Addison believed that the single most noticeable element of this get-up was the shell mark; the total design scheme had this as its core. 48 Texaco UK was born of American parentage and to a great extent this has controlled the company's design identity. The first major design for Texaco UK occurred in the United Kingdom when Texaco acquired full ownership of the Regent Oil Company in 1967. At that time Texaco's trade mark consisted of the word "TEXACO" written in black on a white hexagon background, whose outer edges were painted in red. The Texaco trade mark was changed in 1982 to a white star cut out of a red circle. The letter "T" appeared in red on the white star . Texaco also made changes to the get-up of its service stations. These changes were known as "Hex", a design scheme that Texaco had been using in the United States since 1963. Hex consisted of a horizontal green line on a white canopy. The word 'TEXACO", which was written in red, also appeared on the canopy. The poles holding up the canopy were white. The Texaco logo was mounted on a white pole. 49 In the early 1980s Texaco commissioned the New York design firm Anspach Grossman Portugal, to create a stronger identity for the company for the purpose of projecting a single worldwide image for its Texaco service stations. One of the main reasons for the design change was that Texaco had significantly increased its market share following the acquisition of Chevron's European assets. The project came to be known as "System 2000". One of the design changes was the return of the "star", in red and white, as Texaco's logo. The service stations now had a standard black canopy with the word Texaco printed in red. The canopy also incorporated the red and white star logo. The poles holding up the canopy were black. 50 The next design change occurred in the early 1990s and was known as "Millennium". These changes were only incorporated to service stations in the United Kingdom. This design change did not alter Texaco's use of colours; it changed the architectural design of its service stations. The canopy was slimmer and incorporated a glass section. The round solid poles that held up the canopy were replaced with a tree like structure. Perhaps the main feature of the Millennium design was that the convenience store that formed part of the service station was transformed into an "American diner" and started selling fast food. Men and machines were to be filled up at the same time. Although the new design proved popular with Texaco UK, it did not sit happily within the design agenda of Texaco International. 51 Millennium was replaced in December 1995 by a new global branding image called "Star 21" which was initiated in the United States and designed by Anista Fairclough Design, USA. "Star 21" Texaco service stations have a canopy which is black with the word TEXACO written in red. The canopy also incorporates the Texaco star logo. The poles holding up the canopy (which have returned to being round and solid) are white. The Texaco star logo and the word TEXACO, which appears below it, are enclosed on a black signage board. To my eye, the most distinguishing feature of a "Star 21" service station is the Texaco star and the word Texaco that appears on the canopy. 52 To decide whether the colour green is capable of distinguishing BP's service stations, it is helpful to look at how other service stations in Australia make use of the colour green. In June 1996 Woolworths decided to enter the retail petrol market. Woolworths' retail petrol outlets are known as "Woolworths Plus Petrol" in New South Wales, the Australian Capital Territory, Queensland, Western Australia, South Australia and the Northern Territory, "Safeway Plus Petrol" in Victoria and "Purity Plus Petrol" and "Roelf Vos Plus Petrol" in Tasmania. By December 1998, there were 83 Woolworths service stations operating in Australia; of these 58 were located in carparks adjacent to shopping centres in which a Woolworths supermarket was located. This was a strategic decision on Woolworths' part. Its customer research suggested that motorists did not want to make a shopping trip solely to buy petrol and were keen to combine it with a regular supermarket visit. In 2000, some Woolworths service stations began incorporating convenience stores, largely as a result of Woolworths taking over existing service stations sites which contained a convenience store. The Woolworths service stations used the Woolworths supermarket logo as well as the colours red, green and white as part of their set up. The canopy was painted green with the words Woolworths and +Petrol painted in white. The poles holding up the canopy were white. The pay point that was located at the premises was painted green. From October 1996 to April 2001 the green colour was Pantone 347C. In April 2001 the shade was changed to Pantone 354C, which is the same green as is used in the supermarket logo. 53 7-Eleven stores were set up in Australia in 1977. Two years later 7-Eleven began to establish combined format stores (self-service drive-in service stations which incorporated a convenience store). As at 31 August 2002 7-Eleven had 276 stores operating in Australia, 149 of which were in the combined format. 7-Eleven stores have a distinctive get-up. It comprises a band of three horizontal colours (orange, green, and red) on a white background which appears on the canopy of the service stations and on the building façades. 54 Caltex has operated in Australia since 1941 as a refiner, distributor and marketer of fuels and lubricants. In the early 1980s, Caltex established its service stations and from the mid 1980s began incorporating "Star Mart" convenience stores into those stations. Initially the colours incorporated in Caltex' livery were primarily white, red and black. The canopy was painted red with the word Caltex written in white. The canopy also incorporated the Caltex logo which comprised a white circle out of which a red star was cut out. The poles holding up the station were white. The logo was encased on a black signage board. In February 1999 Caltex adopted a new colour scheme for its service stations and convenience stores. A "deep ocean green" appears as part of the Caltex logo, on the price board and on the numbers appearing above each pump. A "turquoise" green together with orange and yellow appears on the "Star Mart" logo and on the awnings of "Star Mart" convenience stores. Caltex also markets fuel under the "Vartex" brand. "Vartex" service stations, of which there now are five in the Sydney metropolitan area, use the colour green on their logo and canopy. The Vartex logo consists of two halves of a green oval which is encased on a white background. Between the two halves the word Vartex appears in black. 55 To advance its case on distinctiveness, BP tendered the evidence of Dr Bednall, a psychologist and expert in marketing. Dr Bednall is a senior lecturer in the Department of Marketing at Monash University. He conducted a survey in 2001 to determine the public's reaction to the colour green. The survey was administered in shopping centres around Australia in both capital cities and regional centres. Forty per cent of those shopping centres were located within a two kilometres radius of a Caltex, Woolworths or BP service station. Respondents were informed that a survey was being conducted about a building. They were shown an A3 size drawing of a "large" service station. Dr Bednall said that the shape and style of the service station "was deliberately chosen to be unlike any of BP's recent designs". There was no branding on the service station. However, the fascias of the building, the petrol pumps, poster boards, price boards, signage boards and the canopy were all coloured green. After being told: "Here is a picture of a building" respondents were asked the following questions: "Please describe to me what you see. What else do you see? What else?" The interviewers were under instruction not to prompt the respondents and to record verbatim their answers. If no brand was mentioned the following question was asked: "Does this picture suggest any particular brand or brands to you?". If the respondents answered "yes" the next question asked was: "Which brand or brands?". If a brand was mentioned the respondents were then asked: "What is it about the picture that suggests (name of brand) brand to you? Anything else?" Again the interviewers were under instruction not to prompt. The interviewers were instructed that if "colour" mentioned, but no specific colour is named, ask: "Which colour is that?". Question 5 and 6 were as follows: Q5 - "Why does the colour (read out name of colour) suggest the (say name of brand) brand to you? Any other reason? Q6 - "As far as you can remember for how long has the colour (say name of colour) suggested the (say name of brand) brand to you when used at a place like the one shown in the picture?". Question 7 followed from Question 6. It asked respondents to be more specific about how long they associated the colour mentioned in Q6 with the specified brand. Question 8 asked of the goods or services that the respondents could expect to find at the brands mentioned in Q1, Q2 or Q3. Questions 9 to 13, enquired about the respondents' driving history and contact details. 56 A total of 1544 interviews were conducted. When shown the drawing, 47 per cent of respondents said that it suggested BP. When those who did not mention a brand were asked whether the drawing suggested any brand 38 per cent nominated BP. Dr Bednall said that "[n]o other brand featured to any significant extent, in marked contrast to BP". When asked why the drawing suggested the BP brand 84 percent mentioned the colour green. The majority in this group said that green had suggested BP to them for at least ten years or more. This led Dr Bednall to conclude that: "[T]his survey found a strong association in the minds of the vast majority of Australian consumers between service stations making extensive use of green and the brand BP. This reflected consumer learning (sic) of a long-standing association between green and BP. The memory of this association was reported to be a long term one, with most people estimating a long association of at least ten years. Thus the results strongly suggest the extensive use of green, as depicted in the picture shown to respondents, does distinguish and has for a long period of time (ten (10) years or more) distinguished, BP from other brands, for the vast majority of consumers." 57 The survey was criticised by Professor Roberts, a Professor of Marketing at the Australian Graduate School of Management, a faculty run jointly by the University of New South Wales and the University of Sydney. Professor Roberts had been engaged to give his opinion on whether the Bednall survey had the appropriate design, methodology and execution to achieve its object of gaining "an unbiased appreciation of the public's reaction to an objective representation of BP's colour green trade mark". 58 Professor Roberts' main criticisms of the Bednall survey and report can be summarised as follows. First the survey's questions contained to many "prompts" which urged the interviewee to attribute a brand identity to the service station they were shown. Professor Roberts said that "this is a lot of pressure being applied to respondents for a stimulus that is quite sparse in terms of information". Second, the BP shade of green was the only colour used in the survey. Professor Roberts suggested that interviewees may have sequentially associated green with BP in the following way: the interviewees may have recognised the particular shade of green, then thought of BP's green and yellow colour scheme and then thought of BP. He surmised that if the stimulus drawing contained another colour, such as red or even a different shade of green, it may not have evoked BP to as large a proportion of interviewees. He said that if another colour had been incorporated the result of the survey would be more reliable. Finally, Professor Roberts was critical of the service station depicted in the drawing. He said that the specific design elements of the service station shown in the drawing "while sparse do seem to be strongly biased specifically towards BP service station designs". He explained that BP regards as its "4 key communicators" its canopy, pole signs, pumps and its shop and car wash. Each feature was incorporated in the drawing. Professor Roberts said this might "predispose respondents towards identifying a 'BP service station'" primarily ones which consisted of a convenience store which also sold petrol. He went on: "[T]he car wash in the stimulus picture was identified by 45% of respondents without prompting (in my opinion, a remarkably high percentage). … Small to medium petrol retailers, especially if primarily being a convenience store such as "7-Eleven" do not usually have a car wash and are thus likely to be eliminated from consideration by respondents …". On the question whether the Bednall survey achieved its stated objective Professor Roberts said: "In my expert judgment if the same survey were conducted using a picture of smaller establishment (especially of a convenience store incorporating petrol sales, or a supermarket incorporating a service station) and using a Pantone Shade 348C green together with another colour such as red, the results would be very different". 59 In his capacity as an expert in marketing, Professor Roberts also made some general observations about other retailers' use of the colour green. He said that "many grocers" use green as "their primary colour presumably to project freshness and cleanliness to customers". He added that Woolworths was one of the "most prominent" users of the colour green because its image is centred around "The Fresh Food People" slogan. Green in its get-up is therefore a critical supporting component. 60 The harshnessof Professor Roberts' criticisms was qualified somewhat during his cross-examination. First, Professor Roberts accepted that BP's get-up has green as its primary colour and that yellow is BP's secondary colour. Importantly, he acknowledged that "a very large proportion" of respondents managed to associate the colour green with BP from stimuli that did not contain yellow or the BP shield. He retreated somewhat from his claim that other traders use green as their predominant colour: at least he could give no concrete example of green being used as the primary colour in a distinctive get-up. He was asked about a UK survey in which 64 per cent of the people surveyed associated green with BP. Having conceded that market conditions in the UK and Australia were similar, Professor Roberts agreed that this survey showed a strong association between green and BP. As regards the form of the drawing of the service station, Professor Roberts was not really able to say whether, if red had been incorporated in the drawing, the respondents' association with the colour green would have been broken. By the conclusion of his testimony Professor Roberts all but conceded that green was an important stimulus in causing the respondents to recall BP. He insisted however that in part this was the result of interviewees being shown a drawing depicting a large service station with a car wash which, Professor Roberts said, was typical of BP's service station styles. In fact that is not the true position. There is no standard layout of a BP service station in Australia. Moreover, very few service stations (only about 10 per cent) have a car wash. In my opinion it is most unlikely that the design of the service station drawing affected interviewees responses. The only stimulus was the colour green. 61 There is one criticism by Professor Roberts which requires separate comment. He criticised the timing of the Bednall survey in gauging the public's association of green coloured service stations with BP. He pointed out that brand associations that form in consumers' minds take a while to build up. Consequently, he was of the view that "it is highly unlikely that the results of testing public reaction to a given stimulus picture of a service station coloured [green] in 2001, … after the new livery had been used in the market for twelve years, would anywhere near reflect the results of such testing had it taken place in 1991 (when Project Horizon was completed) or even in 1995 (being four years after Project Horizon was completed)". Professor Roberts also referred to the problem of telescoping. Telescoping is the recollection of past events as being later in time than they actually occurred. Professor Roberts said that this problem would arise with the answers given by the survey's respondents to the question that asked them how long they thought "BP" had been associated with the colour green. It is necessary to record Dr Bednall's response. He pointed out that BP service stations were re-imaged in a short period of time and that the re-imaging was accompanied by extensive advertising. For this reason, in his opinion, awareness was likely to have been built rapidly during the initial launch period. As regards the problem of telescoping, he said that for most of us time passes by more quickly than we realise; if there is an error of estimation, it is likely to be that we underestimate the passing of time. Therefore he concluded that "the results provide reliable evidence that large numbers of people at the relevant filing dates would have identified 'BP' with the predominant use of green when applied to a service station". 62 From all of the evidence there is at least one inescapable conclusion. It is that each major oil company that retails petroleum products through service stations has adopted a get-up for its stations which is distinctive of that company's products. The same is true of a non-oil company retailers, such as Woolworths and 7-Eleven, whose own evidence (the 7-Eleven witness was called by Woolworths) speaks eloquently of the distinctiveness of their own styles. 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. I am quiet satisfied that this was as true in 1991 as it was in 1995. At the time of the first group of applications, the new get up had been in existence in some areas for up wards of three years and in almost all areas of Australia for at least a short time. Although short it was of sufficient duration to establish distinctiveness, in my opinion. 63 Here, however, we have a problem of a different order. BP's get-up consists of more than one feature. It comprises the shield, the letters BP, the use that is made of the colour yellow, as well as the colour green. It is true that as a result of its green program, green was regarded as BP's dominant corporate colour. Yet green is only one aspect of its total image. The question that arises in these circumstances is whether it is possible to dissect that total image and obtain trade mark registration of only one component of the whole image. 64 I have not found any English or Australian authorities which provide any guidance on this issue. On the other hand the matter has been extensively considered in the US. Most, but not all, of the cases have arisen when an attempt has been made to register as a trade mark the background design for a word, letter or device mark. The cases include: Application of E J Brach & Sons 256 F 2d 325 (1958); In re Dailey Pickle Co. 122 USPQ 340 (1959); In re McGregor - Doniger Inc. 123 US PQ 49 (1959); Application of Schenectady Varnish Company 280 F 2d 1969 (1960); Application of Esso Standard Oil Company 305 F 2d 495 (1962); The American Basketball Association v AMF Voit, Inc and AMF Incorporated 358 F Supp 983 (1973); Seabrooke Foods, Inc, v Bar-Well Foods Limited, 568 F 2d (1977); In re National Institute for Automotive Service Excellence 218 USPQ 744 (1983); In re Chemical Dynamics, Inc. 839 F 2d 1569 (Fed. Cir 1988). The relevant principles to be extracted from these cases, principles which I intend to apply, are these: Separate components of a single get-up or design may qualify for registration as a mark. They will be capable of registration if each feature considered separately distinguish the goods or services in question. If the get-up or design creates "a separate and distinct commercial impression" then the separate parts will not be registrable. However, if each separate part creates an impression which is totally separate from the others and is distinctive, that is it performs the trade mark function of identifying the source of the goods and services to customers, that will suffice. J McCarthy, McCarthy on Trade Marks and Unfair Competition Vol. 1 at s7.28 puts it this way: "The design must emerge out of the 'background' and 'hit the buyer in the eye' such that it is likely to guide the buyer in purchasing decisions." 65 Customers identified BP's service stations by the colour green alone, independently of the shield. These are the reasons. First BP is the only service station that used green as the predominant colour on its get up when the applications were filed. Second BP has made extensive use of the colour green in its get up - not only with the implementation of Project Horizon but as early as 1956 when green was adopted as one of BP's corporate colours in Australia. Third the colour green has featured prominently in the company's advertising. On the evidence which I have, much of which was not before the examining officer, I am bound to reach the conclusion that the colour green in the shade depicted in the applications had acquired a secondary meaning and had become distinctive of BP's goods and services in the classes for which registration is sought when the applications were filed in 1991 and 1995 respectively. 66 Subject to any comment by counsel as to appropriate form of the orders I would allow the appeals, set aside the decisions of the Registrar (made by his delegate) direct that the applications proceed to registration in the Register Book and order Woolworths to pay BP's costs both of the appeals and of the proceedings before the Registrar. I certify that the preceding sixty-six (66) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finkelstein.

Associate: Dated: 25 October 2004 Counsel for the Applicant: Mr D Shavin QC Ms G Schoff

Solicitor for the Applicant: Davies Collison Cave

Counsel for the Respondent: Mr D Catterns QC Mr S Burley

Solicitor for the Respondent: Spurson & Ferguson Lawyers

Date of Hearing: 1, 2, 3, 4 & 5 December 2003