It’s Not Easy Being Green

BP’s Application for Registration of the Colour Green as a Trade Mark Rejected by IP Australia

IP Australia has again made it clear that the assessment of a colour trade mark under section 41 of the Trade Marks Act 1995 (Cth) should be no different from the assessment of any other trade mark. 

However in rejecting BP’s application for registration of the colour green, the Office noted that while most objects have to be some colour, the act of applying a colour to a product will not act as an identifier for that product. The Office said that in deciding whether colour functions as a trade mark it is necessary to determine whether the trader has used the colour in a way that informs the public that the product emanates from a particular source.

After considering much of the same evidence as in the recent disputes with Woolworths, the Office found that the green colour did not distinguish BP’s goods and services at the filing date as provided by s 41(6)(a).

This leaves trade mark owners that wish to monopolise a colour in Australia having to either:

1. confine themselves to a very specialised niche product where colour can act as a branding indicator due to the lack of competition in the market segment or

2.  need overwhelming use of the colour at the time of filing.

For regular or consumer products, the second hurdle looks very hard to overcome.