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Rothnie and Starkoff have both already noted that the Full Court has finally – 11 months after hearing the issue – granted leave to appeal in the Woolworths v BP case. Don’t get too excited – the appeal on the merits hasn’t been heard yet. Rothnie says it will likely be heard in August. As a decision on whether leave should have been granted, this case is an examplar of why you should get your procedure right and not just assume courts will fix any errors you make. But as a judgment which foreshadows what some of the issues in the appeal might be, this decision shows that some of the more fundamental issues currently in debate in trade mark law – in particular, just what rights you get as the owner of a ‘colour’ trade mark – could end up being canvassed.

The case concerns the registrability of certain colour marks that BP applied for, which in their final form (after several amendments) were described like this:

• Mark 1: ‘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
• Mark 2: 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 the supply of the services covered by the registration, as exemplified in the representation attached to the application form’

To be registrable, a mark has to be ‘distinctive’ – inherently, or through use. BP were held by Finkelstein J to have successfully established that the colour green had become distinctive of their services in the marketplace – so they got registration of their mark. Woolworths have appealed. The case is the first ‘colour mark’ case to have hit the appeal levels. And colour marks are very controversial – they only came in in 1995 in Australia, and our trade marks office has been taking a quite different approach to trade marks offices overseas. Courts all over the world are struggling with how to incorporate these marks into the trade marks system.

The case about leave in essence turns on whether the appeal would be a nullity. No stay of the Trial Judge’s order in favour of registration was ever sought or granted. As a result, the mark became registered. BP argued that there was no longer a power in the court to rectify the Register: instead, in effect (presumably), Woolworths would have to start a whole new action for rectification under section 88 of the Act. As I said: on this issue, the case is an exemplar of what can happen when you don’t get your procedures right.

The leave decision, however, I think is far more interesting for what it foreshadows about the potential arguments in the appeal. Sundberg and Bennett JJ – having decided the appeal was not a nullity (Black CJ dissenting) had to go on to consider whether leave should be granted – which requires that some error/likely error be shown in the decision of the trial judge. In this examination, they list a bunch of appeal questions (paragraphs 71 and following) that counsel have put forward.

For the trade mark maven, there are some interesting questions coming up – regarding the scope of permissible amendment of marks, and the standard of proof to be applied on appeals from oppositions. These more technical questions are of less interest to a lay or beginner audience.

Of more interest for a beginner audience – including my trade marks students – are the questions coming up about the scope of colour trade marks. Just what is the scope of a colour trade mark? How is it defined? If you say that BP has the rights to ‘green’ in relation to service stations – how far do their rights extend? To small uses of green? Some of the questions raised by counsel on appeal go to the heart of these issues:

1. Where the trade mark is a colour, and the application contains both words (‘the endorsement above – ie ‘applied as the predominant colour to the fascias of buildings, petrol pumps, signage boards – including poster boards, pole signs and price boards…’) and a graphic representation (the little cardboard sample of the colour) – how is the trade mark construed or defined?
2. What does ‘predominant colour’ mean (and is it necessary to decide)?
3. Does the point where green ceases to be distinctive coincide with the point where green ceases to be the predominant colour?
4. Does the applicant have to establish distinctiveness across the range of usage of the mark (and how would you even do that for colour?)
5. How does the ‘predominant colour’ impact on the identity of the mark?

BP’s case is a case about whether their mark should be registered – not whether Woolworths has infringed.

Now, you would think that a lot of these issues would only come up when infringement was in question. And indeed, this is what BP argued. But if you are claiming your mark has become distinctive of you through use, then (the court suggests) it might be the case that you have to really define just what is distinctive of you. The big problem that the Full Court identifies with Finkelstein’s judgment is that it was ‘infected with a lack of precision as to the scope of the trade marks under consideration’.

Some of the questions above may end up not being answered. But if even some are argued, it will be an interesting case indeed. I hope they put on the appeal judges who really understand trade mark law.