The Green Dispute Revisited

Erin Mackay provides an overview of the latest instalment in the dispute between BP and Woolworths over the colour green.

Woolworths Ltd v BP [2006] FCAFC 132

You may recall that this dispute arose when Woolworths opposed BP’s registration of the colour green as a trade mark in order to protect its brand. An examination of earlier proceedings in this dispute appeared in the September edition of ART + Law – Trade Marks Update: Purple, Green and Ughs.

BP was initially successful in arguing that the colour green was capable of distinguishing its goods and services from other goods and services because it was distinctive, and therefore that it was able to be registered as a trade mark.

BP argued that the colour green was distinctive from other components within its branding (ie the colour yellow and shield) and initially the judge held that BP’s use of the colour prior to applying for trade mark registration had resulted in the colour green being distinctive to its products and services.

However, on appeal, the full court of the Federal Court found that the primary judge had erred as the colour green had only been used as the predominant colour in conjunction with the colour yellow prior to registration and as such the colour green alone did not have the capacity to distinguish BP’s goods and services.

The Court held that the use of the colour green as the predominant colour in conjunction with any other colour could not alone distinguish BP’s services from other goods and services. It noted that the fact that consumers associate a particular colour with a brand is not enough to establish that the colour was used as a trade mark, that is, that it is a badge of origin of goods and services.

Woolworths also succeeded in other arguments concerning amendments that BP tried to make to its trademark application.

Erin Mackay completed a student placement program through the University of New South Wales at Arts Law in the Spring semester of 2006.