• COURT DIARY

    Green Means Stop For Top

    The oil company BP, now BP Amoco, have been using the colour green to identify themselves and their products since the early 1920's. Originally, the company used the combination of green and yellow as its corporate colours. More recently, BP has emphasised the colour green alone, not only as part of its corporate image but also to identify its petrol service stations.

    This rebranding began in 1989 and led to BP service stations having, as a common feature, the extensive application of a selected shade of green (Pantone 348c) in a standardised manner to the surfaces of each station. All new BP service stations also had a standard layout which consisted of

    • A canopy with a rounded or "bullnosed" edge,

    • Pumps integrated into the columns supporting the canopy,

    • A car wash and shop, and

    • A tall column (5-10 metres high) known as the main identification sign (or "MID") set apart from the other structures. The BP shield logo is placed at the top of the MID and again on each column above the pumps. The MID is intended to be sufficiently conspicuous to allow long distance identification by motorists approaching at high speeds.

     

    Overall, the intention of the new layout which, in the case of new service stations, was identified as Level 5, was that a motorist would see the colour green before the logo could be made out, then as he approached the station he would see the letters BP on the MID and the canopy. By the end of 1991, over 1700 petrol stations throughout the United Kingdom, including Northern Ireland, had been rebranded in the new corporate style. The change was accompanied by an extensive advertising campaign with a heavy emphasis being placed on the association of the colour green with BP service stations.

    In June 1991, BP filed two UK trade mark applications attempting to protect the green colour of their service stations. One application claimed oil, fuel and similar goods in Class 4, the other covered petrol station services in Class 37. Both applications were accompanied by a colour photograph showing a BP Level 5 service station. Both applications were eventually accepted and registered in 1995. The registered mark consisted of a line drawing of the service station with surfaces coloured in the appropriate shade of green, together with the following description "The mark, here depicted in heraldic shading, consists of the colour green as applied to the exterior surface of the premises used for the sale of the goods (Class 4) / provision of the services (Class 37)".

    Both registrations also contained a disclaimer to the effect that registration of the mark "shall give no right to the exclusive use of the colour green as applied to pumps, nozzles and hoses for delivery of unleaded petrol".

    TOP is one of the best known brands of petrol in the Irish Republic, a country where BP does not have a significant retail business. In 1996, the owner of the TOP mark, Tadcastle Oil Products, decided to modernise its petrol outlets in the Republic. This consisted of adopting a green (Pantone 341c) livery for their canopy and MID of their stations. The green colour, which was close to but slightly darker than BP's green, was chosen to reflect Tadcastle's Irish roots. Once again, one of the prime considerations in redesigning the TOP stations was that a motorist should be able to identify them from a distance. John Kelly Ltd, a Northern Ireland subsidiary of Tadcastle, decided to adopt the new TOP design for its stations in the six counties. Although in some parts of Northern Ireland, it is not commercially sensible to associate your product with the Republic, Kelly's market research suggested that most people associated the colour green with environmental friendliness. In the same survey, a number of respondents also expressed the view that the TOP stations looked like BP stations. In spite of this degree of similarity, Kelly decided to go ahead.

    BP sued Kelly for trade mark infringement and passing off. Kelly argued that they were neither infringing BP's registered rights nor passing their products off as those of BP. They also sought to cancel BP's registrations on the grounds that

    • The definition of the mark was confused and meaningless,

    • There was no limitation on the shade of green in the definition of the mark,

    • The mark was not capable to distinguishing BP's goods and services from those of others,

    • The mark was devoid of distinctive character,

    • The applications were filed in bad faith.

     

    At first instance, the Judge (Mr Girvan) dismissed BP's action, but also refused to cancel their registrations. Both parties appealed to the Court of Appeal in Northern Ireland (BP Amoco Plc v John Kelly Limited and another). The Court reversed the decision on trade mark infringement, granted BP the relief requested and ruled as follows:

    • The colour registered was sufficiently defined as that shown in the coloured depictions on the application forms.

    • The marks registered extended to the use of the depicted shades of green on premises in general used for the sale of the goods or the supply of the services…the depiction of the service station was only a vehicle to show the surfaces to which the green colour was to be applied and the registration was not confined to the exact model of station shown in the pictures.

    • BP's colour was not of a merely descriptive nature. It may have some associations with Irishness and environmental friendliness, but, on the evidence, those associations were minor and incidental. The mark was distinctive enough to entitle BP to register it if the evidence was sufficient to establish the necessary association by consumers with BP stations. The question to be asked was whether the colour green on its own signified BP when the logo was removed.

    • On the facts before the Court, the colour green was probably not distinctive of BP at the date of filing or the date of grant. However, by the date of the proceedings against Kelly, the colour green had acquired the necessary distinctive character. (Under UK trade mark law, distinctiveness acquired after registration can be used to resist a cancellation action (Section 47(1) of the 1994 Act)).

    • The contention that BP had registered their mark in bad faith because they always intended to superimpose their logo and other wording on the green painted surfaces should be rejected. It was common practice to register a mark even if it was intended to use it in conjunction with another trade mark.

    • In view of the above, the two registrations owned by BP were valid and enforceable.

    • Kelly's livery was not identical to that of BP, the issue of infringement should therefore be decided under Section 10(2) of the Act.

    • Kelly's choice of green colour was made to indicate a commercial connection with the brand of petrol sold at their service stations. The object was to make the motorist identify the colour with the stations and it was therefore indisputable that such use was use in a trade mark sense. It followed that whatever the ECJ decision on the need for trade mark use to infringe a registered trade mark (see the Arsenal case at p. 1 of this edition of Make Your Mark), Kelly's use would qualify.

    • Under UK trade mark law, as it presently stands, the use of a registered mark with additions, whether by the proprietor or the alleged infringer, is to be regarded as use of the (registered) mark. Such an interpretation is consistent both with the Harmonisation. Directive and the exclusive rights conferred by a registered mark.

    • Taking the relevant factors into account, in particular,

     

    A few instances of actual confusion, and

    The argument that when a motorist travelling at speed sees a green station, at a distance at which the logo cannot be made out, and starts to make preparations to turn off into the station, he is liable to continue his manoeuvre even though he may notice the logo as he nears the station and appreciate that the petrol on sale is Kelly's rather than BP's, it was established that a likelihood of confusion existed on the part of the Northern Irish public.

    It is a necessary ingredient of passing off that the customer is deceived into making the purchase by reason of the confusion engendered by the defendant's use of a get up similar to that of the plaintiff. In the present case, the customer could see sufficiently clearly when he got close to a TOP petrol station that the product sold is not that of BP. He does not buy the petrol under the mistaken impression that he is getting BP petrol. In these circumstances, the tort of passing off has not been committed.

     

    Comment

    This is a very interesting case which shows that the tests for trade mark infringement and passing off in the UK are not identical. Whilst establishing a likelihood of confusion between two marks and two sets of goods/services is enough to succeed in an infringement action, mere confusion does not indicate or establish passing off. The importance of obtaining a trade mark registration has never been better illustrated. In this regard, BP were rather fortunate to have filed their applications in 1991, when the tests for distinctiveness set out by the UK Office were less onerous than they are today. In those simpler days, mere evidence of substantial sales was often enough to achieve registration. At that time, the way in which a mark was used and/or its meaning to the general public were often not considered in any great detail. Under the present regime, given the nature of BP's use of the colour green mark in conjunction with the well known trade mark BP, it is extremely unlikely that a colour mark would be accepted for registration by the UK Office on the back of just over two years' use.

    Having obtained their registration, however, BP were then able to resist a non-distinctiveness attack on the basis of the substantial goodwill and reputation that they have accrued since 1991. In this they should be congratulated since their marketing has always emphasised the trade mark nature of the colour green, something that many companies fail to do. The lesson is simple, by hook or by crook get a registration. As John Kelly found to their cost, a registered mark that has been widely used as a trade mark, even if that use is after the date of registration, is a very powerful weapon.