The evidence of use
83 Before coming to the public advertising and "re-imaging" of service stations in "Project Horizon", some important matters of context should be noted. First, as the primary judge's discussion at [43]-[54] made clear, major oil companies operating service stations in Australia in the decades before 1989 had used colours in their livery or get-up. It is unnecessary to recite the detail in those paragraphs beyond our earlier outline of the primary judge's reasons; but it can be accepted that oil companies (including BP) had a history in Australia (and other countries) of using distinctive colours as part of the get-up of their service stations.
84 Secondly, as a reflection or illustration of the use of colour in the industry just mentioned, from the mid-1950s, BP introduced green and yellow (or as it was sometimes referred to in advertisements, gold) as the corporate colours of BP. The evidence included photographs of BP service stations in 1977 and 1989 which can be taken to be illustrative of the BP livery in the years immediately before "Project Horizon" began in 1989. These showed the prominent use of green and yellow. Sometimes, for instance in the placement of the green shield with yellow letters "BP", these colours were used against a white background. Sometimes, for example on the fascias of the station canopy and building, green and yellow strips of equal prominence were bordered by white strips.
85 The use of green and yellow (or gold) together as a means of distinguishing the BP brand, that is by way of use as a trade mark, is most easily understood by reference to the television advertisements screened on Australian television between 1983 and 1989. Some of these advertisements used a catchy jingle the words of which make clear to the viewer and listener the branding use, that is the trade mark use, of green and yellow (or, as stated, gold) together. The words to the jingle included:
Wherever you go, you find the colours you know, go with the green and gold.
It's nice to go with the people you know, so go with the green and gold.
86 While this was being sung, the green and yellow BP logo was shown, together with other things that were green and yellow (or gold), sometimes unrelated to a service station, such as a young woman dressed in yellow and green, feeding green and gold birds in her hands. One advertisement finishes with the words, visually displayed, "go with the green and gold" in white below the green and yellow logo. Other advertisements use the words "green and gold" aurally; others use the colours by display of the logo.
87 This context makes clear that BP had used green and yellow (or gold) as a combination of colours (often against a white background) for many years as its corporate colours to identify BP and to distinguish its services and products from those of other oil companies. In that context, and as part of that combined usage of colours, green was an important part of its get-up and in that way part of the method of identifying and distinguishing BP products and services. We do not see the colour green, however, as having been used, separately, as a trade mark. Nevertheless, as a prominent element of the colour scheme of BP the colour green would no doubt be capable of founding a mental association with BP if used alone, depending on the context.
88 One then comes to the changes brought about by the implementation of "Project Horizon". Photographs of BP service stations introduced as part of "Project Horizon" were placed into evidence. These reveal a significantly more extensive use of green in the livery of the service stations. In these photographs the yellow strip on the fascias of the canopy and buildings was largely eliminated, as were the white borders, and the white background on the main signage was eliminated. Yellow was, however, still used. The prominent "BP" mark was in yellow. The often-used word "welcome" placed prominently on the fascia of the canopy was in yellow. The prices on the price board were in yellow numbers. The word "workshop" to identify same on the building fascia was in yellow. On the main identification sign, the words, letters and numbers "car wash", "workshop", "24 hrs", "autogas" and "shop" were in yellow. Yellow colouring was used for the conveying of information, through numbers and letters that clearly contrast with the surrounding green. In the context of the history of BP's use of colour these uses of yellow would have been understood as the subsidiary company colour alongside the predominating green. In other words, the colours green and yellow were still being used to identify or brand the stations. The use of green was extensive, and certainly more extensive than previously. It can be said to predominate in the colour scheme of the service stations, though it was visibly and noticeably accompanied by yellow in that two-colour scheme.
89 The evidence included two documents which were referred to as "Retail Outlet Visual Standards" manuals. The apparent purpose of these manuals was to ensure consistent visual displays of signs in the company's service stations. The first (exhibit JAMc18) was issued in 1989 and was said to contain "the standards for all re-imaged sites." It was distributed until 2001. The introduction to this document stated:
"The manual is a statement of the Visual Standards that are required of the BP Retail Network in the areas of graphics, signage, exterior merchandising and display, and housekeeping practices.
These standards compliment [sic] and reinforce the visual effects created by our lay-out and design standards and to contribute to the total package through which BP communicates itself to its customers and competitors.
The principles illustrated in this manual should be carried through on all applications. Dealers must strictly adhere to these standards and field staff will ensure effective implementation within their areas of responsibility."
90 The manual is of importance in showing how BP consistently used various colours in its get-up, including how it used colour in connection with the parts of the service stations referred to in the endorsements. The manual described the key graphic components as "The BP Mark", "The BP Colours" and "The BP Alphabet". For ease of understanding important aspects of the use of colour, we have included relevant parts of the evidence, including the manuals, as annexures to these reasons for judgment. The BP Mark was as set out in annexure A. In the section dealing with "Retail Alphabet", the instructions about certain words and the use of yellow in their display were as set out in annexure B. The picture set out in annexure C appeared in a section dealing with how to lay out the signage on the driveway verge. Examples of the main identification signs are in annexure D. Examples of product price signs are in annexure E. An example of the BP flag is in annexure F. An example of the car wash is in annexure G. An example of the shop signage is in annexure H. An example of the pumps is in annexure J. An example of the pumps with spreader above is in annexure K. Numerous other examples of signage instructions could be given. All have a consistent use of green and yellow. Examples of the view of some service stations, with some perspective provided by distance, can be seen in annexures L, M, N and O.
91 Another manual entitled "The Right Identity: A Guide to Visual Standards", which was exhibit JAMc21, was produced in 1992 and was distributed to all employees. It was not superseded until 1997. Mr McCrindle, an employee of BP, said that it "provided background material to BP's new identity introduced through Project Horizon". This document describes the mark and logo as in two colours "BP Yellow" and "BP Green". The document gave the following instructions about the two colours "BP Green" and "BP Yellow":
"Colour is a significant and prominent feature of BP's corporate identity. The two BP colours - BP Green and BP Yellow - are associated with the BP Mark and Identifier. Their proper use is therefore crucial to the integrity of the whole identity system.
BP Green is the primary colour. It is the colour we wish the outside world to recognize us by and it may therefore be used freely in a whole host of applications. The appearance of the secondary colour, BP Yellow, in conjunction with BP Green, can reinforce the perception of BP.
However, employing a combination of BP Green and BP Yellow in applications other than the BP Mark and Identifier does present a problem. Used judiciously, the two colours can help compliment [sic] and reinforce the corporate identity. Used inappropriately, they can detract form the impact of the logo.
Essentially, their use should not overpower the BP logo nor move from a 'background' element of design to a shape or symbol which competes with the logo - for example in outlining 'masthead' lettering on a BP periodical.
Of course, there will be occasions when these colours occur naturally as in photographs, or will be appropriate for illustrations or artistic use, for example in advertising (see below). However, in these cases the green-and-yellow combination should be used with discretion."
It is to be noted that on this page there is an instruction that "solid BP Green and white are the main background colours for all BP communications".
92 The evidence of advertising after the commencement of "Project Horizon" and up to July 1991 and then up to October 1995 (being the two relevant filing dates) was less than complete. In significant respects, records were unavailable because of the passage of time.
93 Before coming with more precision to the consequences of these difficulties, it is necessary to deal with the television advertisements which have been screened in Australia since the commencement of "Project Horizon".
94 Exhibit JAMc28 contained a number of television advertisements. All displayed a more extensive use of green than had previously been displayed in television advertisements prior to the change. With limited exceptions, however, that green was accompanied visually by the use of yellow. The exceptions were a green road running up to the BP mark, a green pipe in an oil refinery and an almost exclusively green truck, with a yellow BP mark on the door of the prime mover. These uses of green, however, are not trade mark uses of the kind the subject of the application. There is no claim for use of green on trucks, or pipes in refineries, or on roads. At their highest, they are part of the context of the use of colour generally in the advertising from which conclusions can be drawn about whether green has been used as a trade mark in the respects claimed in the applications.
95 BP was not able to produce what were called the running sheets for its advertisements. These were the business records which would have identified the dates and frequency of publication of the advertisements in question. It can be inferred that some advertisements (such as the one based on transforming an old green and gold station into a predominantly green station) were shown in or about 1989. It can also be inferred that there was some significant advertising of that character at the launch of Project Horizon. It can also be inferred that a significant amount of the advertising in exhibit JAMc28 had occurred by October 1995.
96 There was also evidence of the use of press and print media. Exhibit JAMc30 contained examples of print advertisements for BP since 1989. Again, evidence showing the dates and frequency of such advertisements was lacking; though, once again, it can be inferred that some of the material was published in, or shortly after, 1989. These advertisements again use green and yellow. Visually, green dominates, but yellow appears on the canopy fascia, the flag, price board and other structures referred to in the applications. One advertisement said "stop at the green light". Particular reference was made in submissions on behalf of BP to advertisements which referred to "BP's new green stations". The evidence was, however, meagre as to the extent of use of this phrase in advertising. Even assuming that in print advertisements this was said, it was not, on the evidence, repeated on television. Visually, both in the print media and television, the use of colour was the predominant green, with the habitually used yellow.
97 An example of advertisements that it can be inferred were published in, or shortly after, 1989 is set out at annexure P. A change of livery is demonstrated. Green is predominant; but yellow is recognisably part of the new colour get-up identifying BP. This advertisement taught the change of corporate colours - from equal green and yellow to predominant green with yellow. Other examples of advertisements which it can be inferred were published at the time of the change in livery are at annexure Q. Once again green dominates, but only with yellow.
98 The evidence also included some point-of-sale and promotional material. Once again, there was no precision in the evidence as to timing and frequency of the use of this material. Some of this material, such as the cover of a demonstration pack booklet, was coloured green, with white letters, without any yellow. Other material used the familiar yellow juxtaposed with the green.
99 Taking all the evidence together the following can be said. First, in the context of the oil industry in which a small number of companies had for many years used colours to distinguish their goods and services from the goods and services of competitors, before 1989 BP used green and yellow to distinguish its service stations, goods and services from those of its competitors.
100 Secondly, by 1989, BP made a deliberate decision to change what might be called the colour branding of BP. Green was to be, and was, used more extensively than yellow in the livery of service stations and in advertising. It continued, however, to be used with yellow.
101 Thirdly, on the fascias of buildings, petrol pumps, signage boards, (including poster boards, pole signs and price boards), and spreaders in service stations (the parts of service stations referred to in the endorsements), green was used as the predominant colour, but only with yellow. This use of green as the predominant colour, with the use of yellow, can be understood as trade mark use, replacing the use of green and yellow given approximately equal weight and prominence as the company's brand colours before 1989.
102 Fourthly, the question arises whether, after 1989, the advertising reveals not only the use of predominantly green with yellow as the company's colours and as a trade mark, but also the use, as a trade mark, of green alone. This question cannot be answered simply by attempting to find an advertisement without yellow present, although there is no such advertisement in evidence. For the conclusion to be drawn that green alone was being used by BP as a trade mark prior to 1991 or 1995, one must understand the material as stating to the ordinary person that green alone was being used as a badge of origin to distinguish BP's goods and services from those of its competitors.
103 Some of the print media referring to "green stations" and the "green light" clearly sought to use green in this way. Overall, however, it is difficult to conclude that the colour green was used by BP before 1991 and 1995 as a trade mark other than by its use of green as the predominant colour in conjunction with yellow. Certainly, on the evidence, in relation to the parts of the service station referred to in the endorsements, green has always been used in conjunction with yellow.
104 The fact that from a distance the predominant green of the colour of the service station (in particular the fascias of the canopy and buildings and any pole sign) would be noticed, and would assist the motorist in identifying the existence of a BP service station, is not sufficient to transform the use of green predominantly with yellow into the use of green as a trade mark. The fact is that the fascias had yellow logos and marks prominently placed on them, the main identification signs had the green and yellow logo and mark, as well as yellow script, the price boards had a green background and yellow writing, the pumps and spreaders had yellow logos and marks.
105 After the change brought about by "Project Horizon", green predominated in the colour scheme of the service station, but at all times it was used with yellow as the subsidiary, but ever present companion. Looking at all the advertisings, print, television and point of sale material, we conclude that the colours used to distinguish BP's goods and services from those of its competitors in the parts of the service stations referred to in the endorsements were its existing brand colours, green and yellow, with a marked and clear predominance of green. Green, alone, was not used as a trade mark in the parts of the service stations referred to in the endorsements. BP stressed, however, the educative role of that part of the advertising which stressed green - that told the reader of the "Green BP stations" and to "stop at the green light". But even if it be assumed that there was some trade mark use of green alone in the particular print advertisements to which we have referred, the evidence is inadequate to elevate that to the point where it establishes the matters referred to in s 41(6).
106 Taking all of the evidence into account, including the absence of evidence as to the frequency of specific print or television advertising, we are unable to conclude that any trade mark use of colour by BP at the relevant times has been other than green as the dominant colour in conjunction with yellow as the subsidiary colour.