Woolworths Limited v BP plc [2006] FCAFC 132

Woolworths Limited v BP plc [2006] FCAFC 132

The amendments to BP's trade mark applications substantially affected the identity of the trade marks and extended the scope of rights, contrary to s 65(2) and (5). BP failed to prove, for s 41(6), that the use of green alone or green as the predominant colour with other colours on the relevant surfaces of service stations was sufficiently distinctive as a trade mark by the relevant filing dates. Therefore, the trade marks should not have been registered and the Register should be rectified to remove them.

Jurisdiction
Australia
Judgment Date
04 September 2006
Procedural Posture
Appeal / Full Court of the Federal Court of Australia, on Appeal From a Single Judge
Outcome
Appeal allowed; registration of BP's trade marks to be rectified (removed); orders to be finalised after further submissions.
Legal Topics
['trade Marks' 'colour Marks' 'trade Marks Act 1995' 'distinctiveness' 'amendment of Trade Mark Applications' 'rectification of Register']
['intellectual Property'] ['trade Marks' 'colour Marks' 'trade Marks Act 1995' 'distinctiveness' 'amendment of Trade Mark Applications' 'rectification of Register']

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Procedural Posture

Appeal / Full Court of the Federal Court of Australia, on Appeal From a Single Judge

Legal Issues

  1. 1 ["Whether amendments to BP's trade mark applications contravened s 65(2) and (5) of the Trade Marks Act 1995" 'Whether the colour green as used by BP was distinctive under s 41(6) of the Act and registerable as a trade mark' 'Whether the Full Court has power to rectify the Register after registration occurred post-judgment without a stay']

Ratio Decidendi

The amendments to BP's trade mark applications substantially affected the identity of the trade marks and extended the scope of rights, contrary to s 65(2) and (5). BP failed to prove, for s 41(6), that the use of green alone or green as the predominant colour with other colours on the relevant surfaces of service stations was sufficiently distinctive as a trade mark by the relevant filing dates. Therefore, the trade marks should not have been registered and the Register should be rectified to remove them.

Court Disposition

Appeal allowed; registration of BP's trade marks to be rectified (removed); orders to be finalised after further submissions.

Orders

  • ['Within seven days, the appellant file and serve a draft minute of orders to give effect to the reasons.' 'The appeal stand over to a date to be fixed for any argument as to the orders.']