BP Amoco PLC v. John Kelly Ltd & Anor

Factual and Procedural Background

The case concerns the validity and infringement of registered trade marks consisting of a particular shade of green used by the Plaintiff on service stations. The Defendant challenged the registrations on several grounds including the absence of limitation on the shade of green, lack of distinctiveness, and bad faith in registration. The dispute also involved allegations of infringement of the Plaintiff’s registered colour marks by the Defendant’s use of green on their own service stations. The procedural history includes a trial judge's decision on validity, distinctiveness, bad faith, and infringement, which was appealed and considered by the court in this opinion.

Legal Issues Presented

1. Whether the registration of the colour green marks was valid, including the question of whether the marks were sufficiently defined and distinctive.
2. Whether the registrations were made in bad faith.
3. Whether the Defendant’s use of a similar shade of green on their service stations constituted infringement of the Plaintiff’s registered trade marks under section 10(2) of the Trade Marks Act 1994.
4. Whether there was a likelihood of confusion between the Plaintiff’s marks and the Defendant’s use.
5. Whether the Plaintiff could succeed in a passing off claim based on the Defendant’s use of green on service stations.

Arguments of the Parties

Defendant's Arguments

• The trade mark registrations were invalid because there was no limitation on the shade of green registered, effectively covering all shades.
• The marks lacked distinctive character and could not distinguish the Plaintiff’s goods and services from others.
• The registrations were made in bad faith as the Plaintiff did not intend to use the marks without additional branding such as logos.
• The Defendant’s use of green included added matter (the “top” logo), which should be considered in assessing likelihood of confusion.
• The Defendant argued that only “morons in a hurry” could be confused, thereby challenging the passing off claim.

Plaintiff's Arguments

• The registrations were properly limited to the particular shade of green depicted (Pantone 348c) and not all shades of green.
• The colour green had acquired distinctiveness through use, evidenced by market research and consumer recognition.
• The registrations were not made in bad faith; it is common practice to register marks that are used in conjunction with other branding elements.
• The Defendant’s use of a similar shade of green on service stations was likely to cause confusion among consumers, particularly motorists identifying stations at a distance.
• Use of added matter or logos with the registered mark does not negate infringement.
• The passing off claim was argued on the basis of misrepresentation causing confusion and damage, although the court ultimately found this claim unsupported.

Table of Precedents Cited

Court's Reasoning and Analysis

The court first addressed the validity of the colour green registrations, rejecting the Defendant’s argument that the marks were not limited in shade. The court found the registrations to be clearly limited to the shade depicted (Pantone 348c) and that slight variations due to application or weathering pertain to infringement issues rather than registration validity.

Regarding distinctiveness, the court acknowledged the statutory presumption of validity favoring the Plaintiff but noted limited evidence of distinctiveness at the time of registration. However, it accepted that by the commencement of proceedings, sufficient consumer association had been established through market research and witness testimony. The court relied on established tests from EU and UK case law to assess distinctiveness and found the colour green sufficiently distinctive in the context of the Plaintiff’s service stations.

The court rejected the bad faith argument, holding that registration of marks intended to be used with additional branding is common and lawful. There was no evidence that the Plaintiff intended to register the entire spectrum of green shades or that the registration was otherwise made in bad faith.

On infringement, the court considered the likelihood of confusion, guided by the ECJ’s principles and UK case law. It concluded that the Defendant’s use of a similar shade of green on service stations was likely to cause confusion among the public, particularly motorists who identify the stations by colour at a distance before discerning logos. The court discounted the Defendant’s argument that the presence of additional logos negated confusion, relying on precedent that added matter does not avoid infringement.

Finally, the court addressed the passing off claim. It reaffirmed that deception leading to actual purchase under false impression is necessary. The court found the evidence insufficient to establish that customers were deceived into purchasing the Defendant’s petrol under the mistaken belief it was the Plaintiff’s product, and thus rejected the passing off claim.

Holding and Implications

The court ALLOWED THE APPEAL in favour of the Plaintiff.

The court held that the colour green registrations were valid and distinctive, not registered in bad faith, and infringed by the Defendant’s use of a similar shade on their service stations. The Defendant’s defence based on use of added matter was rejected. The passing off claim was dismissed for lack of evidence of deception leading to purchase.

The direct effect is that the Plaintiff’s registered colour marks are upheld and infringement established, entitling the Plaintiff to appropriate relief. No new legal precedent was established beyond application and confirmation of existing principles.