Woolworths Limited v BP plc

THE COURT: 1 Following the delivery of our substantive reasons for judgment Woolworths Limited v BP plc (No 2) [2006] FCAFC 132, BP filed a notice of motion seeking orders that the Court direct the Registrar of Trade Marks to amend the representations as entered in respect of the two marks in suit. 2 In the case of trade mark No 559837 the amendment sought would substitute for the endorsement presently on the Register the following: "The Trade Mark is limited to the colour green as shown in the representation attached to the application form." In effect the mark would then accord with the form of the original application, before any amendments; see our judgment at [3]. 3 In the case of trade mark No 676547 the amendment sought would accord with the first amendment, made in July 1997; see [10], that is to say for "the colour GREEN applied to a significant proportion of the exterior surface of the buildings etc…" 4 In both cases the amendments sought by BP's motion would result in the marks being for the colour green alone, and not green as the "predominant" colour. 5 In the course of argument on the motion, Mr Shavin QC for BP proposed a somewhat different course. He asked that each of the two applications in their unamended form be remitted to the primary judge for further consideration. (Strictly speaking, however, in the case of the second application, this would not mean the application as originally filed but as amended by the July 1997 amendment.) According to Mr Shavin's submissions, this would mean that the question of amendment would have been finally resolved in this Court in accordance with our decision and that the matter remitted to the trial judge would be the consideration of the unamended applications under s 41(6) in accordance with the principles we articulated. It is unclear where this would leave the foreshadowed application to the High Court for special leave to appeal from our decision. 6 Mr Shavin submitted that the course he proposed would only involve undoing what the Full Court has ruled was wrongly done, that is to say amending the applications contrary to the requirements of s 65 of the Trade Marks Act 1995 (Cth). The primary judge would not be engaging in a rehearing so much as a continuation of the original hearing: Community and Public Sector Union v Telstra Corporation Ltd (No 2) [2001] FCA 479 at [15]-[17]. The issue would be whether BP's trade marks for the colour green alone, and not as the "predominant" colour, satisfied s 41. Mr Shavin undertook that BP would call no further evidence. 7 Assuming (which was not seriously disputed) that there is available jurisdiction, we do not propose to make the orders sought by BP. It would not be consistent with the proper administration of justice to do so, and it would be quite unfair to put Woolworths to the trouble, risk and expense of a further trial (and, more likely than not, a further Full Court appeal). Mr Shavin said that the initiative for the amendments came from the Registrar but that would not have prevented BP resisting them and appealing any adverse decision by the Registrar. At all times the amendments were opposed by Woolworths, and BP chose to assert before the Registrar, the primary judge and on the appeal to the Full Court the validity of the marks in their amended form. 8 In Nikken Kosakusho Works v Pioneer Trading Co [2006] FSR 4 the English Court of Appeal was faced with a similar application. An integer of a patent claim was "an annular groove of predetermined depth". The trial judge construed this to mean "a groove whose depth the maker has decided in advance" and not, as the patentee argued, "approximately 3 to 5 mm". The trial judge found the claim as so construed lacked novelty. After judgment the patentee sought an amendment to delete "predetermined depth" and substitute the 3 to 5 mm measurement. The trial judge's refusal was upheld by the Court of Appeal. 9 The leading judgment was that of Jacob LJ. His Lordship (at [13]) pointed out that the proposal would lead to two trials instead of one. An exercise of discretion to allow the amendment would be improper for three reasons. First, there was the "straightforward application" of the principles of Henderson v Henderson (1843) 3 Hare 100. In Australia the corresponding authority, following Henderson, is Port of Melbourne Authority v Anshun Pty Ltd (1981) 147 CLR 589. Generally speaking, after judgment a party to litigation will not be permitted to raise an issue which, acting reasonably, it should have raised in the proceedings before they were finally determined. 10 Secondly, there was the particular strictness with which courts have applied the Henderson rule in patent litigation: Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59. 11 Thirdly, there was the overriding objective in the Civil Procedure Rules of saving expense. In answer to the argument that all these matters could be dealt with by compensation in costs, Jacob LJ said (at [22]): "Moreover I am not satisfied that this case is only about costs. Always when the question of patent validity is in issue commercial uncertainty is created, not only for any of the parties involved but the public in general. The court is particularly entitled to have regard to that." 12 Mutatis mutandis, we think the same considerations apply to trade mark litigation and to the present case. 13 Mr Shavin argued that these discretionary considerations assume less importance in this case as this Court dealt with the marks on two foundations in its reasons for judgment: the first was that the marks were in the form that BP had applied for; and the second was that BP had in fact applied for the colour green. We do not agree with this characterisation of our decision. In our substantive reasons for judgment, we concluded at [121]-[125] that BP had failed to establish the matters provided for in s 41(6) of the Act in respect of each of the trade marks for which it finally applied. Earlier in our reasons, we pointed out that s 41(6) requires specific consideration of the extent to which BP had used each of the marks applied for as a trade mark before the date of filing and whether that use was sufficient to distinguish the designated goods and services as being those of BP: at [81]. In the course of our reasons, we rejected BP's evidentiary contention that it had used the colour green, either alone or as the predominant colour, as a trade mark in respect of the parts of the service station referred to in the endorsements. In that context, it was necessary, in dealing with the arguments of the parties, to come to a view about what the evidence revealed as to any trade mark use of colour before 1991 and 1995. We did not, however, deal with the appeal on the basis that BP had applied for trade marks different from the endorsements in their form following the relevant amendments. 14 In our opinion, BP's motion falls squarely within the principles discussed in Nikken. BP is effectively seeking a second trial at which the distinctiveness of different trade marks would be considered, presumably on the basis of different submissions and possibly different evidence from that considered at the first trial. It would not be an appropriate exercise of our discretion to make orders providing for a new trial concerning the distinctiveness of substantially different trade marks from those previously considered by the delegate of the Registrar of Trade Marks, the trial judge and two Full Courts. 15 Woolworths did not object to a stay pending any application by BP for special leave to appeal to the High Court. 16 Accordingly we will order as follows: 1. The respondent's motion by notice dated 12 October 2006 is dismissed; 2. The appeal is allowed; 3. The orders made by Finkelstein J on 1 December 2004 are set aside; 4. The registration of trade marks Nos 559837 and 676547 is cancelled; 5. The respondent pay the costs of the opposition proceeding before the Registrar, the proceeding before Finkelstein J, the application for leave to appeal, the appeal and the motion, including in all instances reserved costs; 6. The foregoing orders 3, 4 and 5 are stayed pending the hearing and determination of any application by the respondent for special leave to appeal to the High Court of Australia. I certify that the preceding sixteen (16) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Heerey, Allsop & Young.