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1. In this appeal the appellant BP Amoco plc (BP) has appealed against a decision of Girvan J dated 26 June 2000, whereby he dismissed the action brought against the respondents by BP for injunctive relief and other remedies. The basis of BP’s claim against the respondents is that (a) they have infringed BP’s UK registered trade marks numbers 1469512 and 1469513 by using the colour green on the whole or a substantial part of the exterior surfaces of their TOP service stations, and (b) they have thereby committed the tort of passing off their TOP branded service stations and premises and oils, fuels and lubricants as and for those of BP or as otherwise connected with BP’s business. The respondents also appeal against the judge’s decision on their counterclaim against BP, whereby they sought declarations that the trade marks were invalidly registered and revocation of the registration of the marks. The judge dismissed the counterclaim and certified in his order that in the proceedings the validity of the trade marks had been contested and the marks were found by the court to have been validly registered.

2. BP Amoco plc is a large multi-national corporation which is concerned through its group of companies in exploration for and production of oil and gas and refining, marketing and sale of oils, fuels, lubricants and chemicals. The retailing of motor spirit, or petrol, is carried out through the medium of a chain of service stations in a number of countries. In the United Kingdom this is done under the trading name of BP (although between 1932 and 1967 marketing was carried out jointly with Shell under the name of Shell-Mex and BP). The petrol retailing market is very competitive and oil companies constantly seek means to promote their brand of petrol, enhance public knowledge and awareness of their product and encourage customer loyalty. One of the methods by which they do so is by using signs and marks to distinguish the product and the service stations in which it is sold and enable potential customers to recognise them easily. Each naturally wishes to reserve the use of such signs and marks to itself and prevent other concerns from using them and so benefiting from the goodwill and brand recognition built up by the owner.

3. BP has used the letters “BP” as its logo in various forms since the 1920s, and this has been registered as a trade mark. The colours green and yellow were first adopted as corporate colours, according to company tradition, in 1923. Since then green and yellow have been predominant in the company’s livery, in varying proportions. In 1959 a New Look was launched, on the advice of a design consultant, to emphasise the house colours of green and yellow. At that time a good deal of white appeared as a background colour in service stations. The canopy was typically painted in green and yellow bands and green was used for vertical elements and yellow for horizontal elements, with some admixture of red. There continued to be a certain amount of variation and inconsistency between different countries in the use of colour.

4. In 1986 BP decided to set up a re-imaging project, which was christened Project Horizon, with the object of developing a new retail identity for its service stations. A steering group was set up and market research commissioned. The main findings, as set out in paragraph 18 of Mr JA Perry’s statement, were as follows:

5. The group concluded that a major design exercise needed to be undertaken. The “BP” logo was to be redesigned and modernised and the retail image brought up to date.

6. The design consultants advised BP that as it was the only oil company using the colour green, that colour gave high levels of recognition, which gave BP a significant advantage. They said that green was the unique element and yellow the accent. Ms Kate Manasian, who was in charge of the design project on behalf of the consultants, pressed upon BP the view that the colour green was one of the most effective marketing communications that BP had, as a non-verbal expression of identity. The slogan was coined “BP = Green = BP” as the objective of the marketing process, by which it was meant that BP espoused the colour green and the colour green conveyed to the public that the product was BP’s. As Ms Manasian put it, the aim was that BP should “own” the colour green, just as Coca-Cola “owns” red.

7. BP approved the recommendations of the marketing consultants and set to in 1988 to put them into effect, with a “roll out” in 1989. The shade Pantone 348c, which is in the middle of the range of green, was chosen. The aim of the designers of the new livery for the BP service stations was set out by Mr Perry in paragraph 24 of his statement:

8. The project was launched on 31 January 1989. A new logo was designed and work commenced on a comprehensive re-imaging of existing service stations and building of new stations in conformity with the standards adopted in the project. A standard design was adopted for new service stations, known as Level 5, and the appearance of existing stations, classified as Levels 1 to 4, was altered in accordance with a series of differing designs. The common feature of each was the extensive application of the selected shade of green (Pantone 348c) to the surfaces in a standardised manner for each level of station.

9. The flagship Level 5 stations have 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 known as the main identification sign (or “MID”) set apart from the other structures. The MID is typically some five to ten metres high, and is intended to be sufficiently conspicuous to allow long-distance identification by motorists approaching at high speeds. The front surfaces of the columns in which the pumps are set are painted silver and the underside of the canopy is white, but virtually all the other horizontal and vertical surfaces and the pumps are coloured green. The yellow BP logo within a schematic version of the shield is placed at the top of the MID and again on each column above the pumps. It is also displayed, without the shield, on the top of the canopy, together with the word “Welcome” in yellow paint. The overall impression is designed to be a colour wash of green, with a yellow accent. In the case of stations of Levels 1 to 4 the lay-out may be different and the amount of surface painted green may be smaller, but the same impression of greenness is intended to be conveyed. As the motorist nears the station he will see the colour green before the logo can be made out, then as he approaches he will be able to see the letters “BP” on the MID and the canopy.

10. The “roll out” was carried out at very high speed and on a very large scale, involving substantial expenditure. By the end of 1991 21,700 stations in 50 countries, 1702 of them in the United Kingdom, had been re-imaged to conform with the Project Horizon standards. The project was virtually complete by the end of November 1990. At the same time BP commenced a large advertising campaign, with heavy emphasis on the association of the colour green with BP service stations.

11. On 29 June 1991 BP lodged in the Patent Office two applications for registration of trade marks, each dated 25 June 1991 and made on the form designated TM3. The first was in respect of oils and greases, lubricants, fuels, transmission oils and hydraulic oils, and was to be registered under Class 4. The second, to be registered under Class 37, was in respect of vehicle lubrication, maintenance, cleaning and repair, anti-rust treatment for vehicle washes, vehicle service stations, vehicle upholstery repair, and vehicle tyre fitting and repair. The respondents advanced the argument that the trade mark certificates ultimately issued are internally inconsistent and make no sense. It is necessary therefore for us to set out the course of the applications for registration in some detail.

12. In box 5 of each application form there was inserted a colour photograph showing a Level 5 service station in the livery made standard for such stations in accordance with Project Horizon. Box 9 of the class 4 application contained the entry under the heading of “Representation of marks applied for”:

13. The form TM3 for the class 37 services contained the same photograph in box 5 and the same wording in box 9, with the substitution of the word “services” for “goods”. The service station shown in each photograph was situate at Chessington Zoo, Surrey, and the green colouring was intended to reproduce the shade Pantone 348c.

14. The registrar was not content to register the marks and a hearing was ultimately held before Mr NA Harkness, a Trade Marks Registry hearing officer, on 14 July 1994. By letter dated 22 July 1994 Mr Harkness stated:

15. On 19 October 1994 BP sent to the Registry an example of how the trade mark could be advertised in the Trade Marks Journal. It consisted of a drawing of the Level 5 station which had been depicted in form TM3 in schematic form. The relevant surfaces were coloured green but the logo and the other writing and figures were omitted. The description of the mark below the picture read:

16. One may note that the representation did not in fact show the colour green in heraldic shading but in colour. An endorsed note states, however, that a camera ready copy shaded in accordance with the heraldic convention would be supplied for “the TMJ ad”. By letters dated 9 January 1995 the Registry informed BP that the applications might proceed to advertisement in Part B of the Register and asked for a camera ready copy of the mark in heraldic shading for the purpose of advertisement in the Trade Marks Journal. BP then on 13 January 1995 furnished amended versions of Forms TM3. In box 5 the photographs of Level 5 station were replaced by a line drawing of a similar design of station, with the surfaces coloured green and all logos, writing etc omitted. Box 9, however, of the first application form now contained the wording:

17. Box 9 of the second application form contained the same wording, substituting “services” for “goods”. The reference to heraldic shading was misplaced, but it does not seem to have been remarked upon by the Registry. The applications duly appeared in the Trade Marks Journal, with the same wording as in the TM3 forms, but the coloured portions were depicted in heraldic shading in the picture.

18. The registration certificates in respect of the mark were sealed on 14 July 1995. They showed the line drawing contained in the amended TM3 forms, and described the mark in the Class 4 registration as follows:

19. In the Class 37 certificate the wording was the same, with “services” appearing instead of “goods”. The entry in the register, as established by certified copies issued by the Registry, consisted of three pages in each case. The first depicted the line drawing, with the surfaces coloured in the appropriate shade of green. The second and third pages contained details of the mark, its ownership and its registration, and the description of the mark contained the same wording as on the registration certificates, “here depicted in heraldic shading”.

20. The respondent John Kelly Ltd (Kelly) is a company registered in Northern Ireland, which has had a long history of trading in fuels. It was purchased in 1995 by the Tedcastle group, of which Tedcastle Oil Products Ltd (TOP) is another subsidiary, trading in oil and petrol in the Republic of Ireland. In 1996 TOP had market research carried out, in consequence of which it decided to adopt a new livery for its service stations, delivery vehicles etc. The market research consultants recommended that a new logo “top” should replace the company’s existing logo and that the colour green should be adopted as the livery for its service stations. The shade of green was a little darker than that registered by BP, but still quite close to the BP green. The consultants do not appear to have pointed this out to TOP, but may not have thought it material, since BP does not do significant petrol retail business in the Republic.

21. The recommendations were accepted and TOP engaged designers to prepare a final design for a new logo and colour scheme. One of the prime considerations in designing the stations was that a motorist should be able to identify them from a distance when approaching at speed. The designers wanted a distinctive colour, which reflected the Irish credentials of TOP. The logo adopted consisted of the letters “top” in lower case italics, depicted in white, together with five curved coloured bands resembling feathers. The colour selected for the canopy and MID of the service stations was green, and they were painted in a fashion very similar to that of BP stations. The pumps and shop front in the photographs exhibited are, however, white and the use of green painted surfaces is rather less than in the case of BP stations. The shade of green is fairly close to that of BP’s Pantone 348c, but appears a little darker. It was described to us as being Pantone 341c. If one did not see them together, however, the colours could readily be confused. The logo is displayed at the top of the MID and on the canopy.

22. Kelly decided to adopt the same design for its service stations in Northern Ireland, with the agreement of its holding company. The first station so designed with the “top” logo and the colour green opened in June 1997, and Kelly now has five such stations in Northern Ireland. The second-named respondent Glenshane Tourist Services Ltd operates one of them under a licence or franchise from Kelly. When Kelly was considering this move one of the factors taken into account was whether the use of the colour green might cause the public to associate the colour with Irish connotations and prove an adverse feature with part of the population. The market research consultants advised in October 1997, however, that respondents tended rather to associate the colour green with environmental friendliness. Their report indicated that it was frequently compared with the BP colours. A number of respondents, shown pictures of TOP stations, expressed the view that they looked like BP stations. Notwithstanding this degree of similarity, however, Kelly did not carry out any trade mark search and the managing director stated in his evidence that he had been unaware of BP’s trade marks finally registered in 1995.

23. In this action BP asserted that it had validly registered trade marks which gave it the exclusive right to use the colour green on the exterior surfaces of service stations selling goods and supplying services covered by the trade marks. It claimed that the respondents had infringed those trade marks by operating TOP service stations in Northern Ireland in a green livery. It also claimed that the respondents were guilty of passing off their products and service stations as connected with those of BP. The respondents disputed the validity of the registration of the marks on several grounds and sought a declaration of invalidity. They denied that if the marks were validly registered they had infringed them. They further denied that they were guilty of any passing off. The learned trial judge held that the trade marks had been validly registered but that the respondents had not infringed them. He also found that they had not been guilty of passing off. He therefore refused to give BP any injunctive or other relief. On appeal all of these issues were argued before us.

24. When the applications were made by BP for registration of the trade marks the Trade Marks Act 1938 was in operation, but by the time that they were finally registered that Act had been superseded by the Trade Marks Act 1994, which came into operation on 31 October 1994. The scheme of the two Acts is different in material respects, but by reason of the effect of the transitional provisions of the 1994 Act it is not necessary to examine the 1938 Act. Those transitional provisions, contained in the 3 ^rd Schedule, provided that pending applications for registration were to be dealt with in accordance with the provisions of the 1938 Act. Once the marks were registered, however, they were treated as existing registered marks, were transferred to the register kept under the 1994 Act and had effect as if registered under that Act.

25. The Trade Marks Act 1994 was enacted in order to give effect to the Trade Marks Directive 89/104/EEC, the object of which was to approximate the laws of Member States relating to trade marks. The wording of the Act follows closely that of the Directive and is to be construed in a manner consistent with its Community origins and principles and, so far as possible, in a way which gives effect to the Directive: Re Procter & Gamble’s Trade Mark Application [1999] ETMR 375 at 377, per Robert Walker LJ; Bach Flower Remedies Ltd v Healing Herbs Ltd [1999] IPT 146 at 150, per Morritt LJ.

26. The arguments which were advanced against the validity of the registration of the marks were as follows:

27. Mr Shipley submitted on behalf of the respondents that the definition of the trade mark contained in each entry in the Trade Marks Register is meaningless and so nothing effective for BP’s purposes has been registered. This contention was not pleaded among the amended particulars of objection to the trade marks, but the judge considered it and decided the issue and argument was presented to us on it. The definition in each case, on page 2C of the certified copy of the entry in the Register, contains the words “here depicted in heraldic shading”, whereas page 2A shows the surfaces of the service station coloured green. It is clear from the history of the applications for registration that the draftsman of the amended TM3 forms included the wrong wording in box 9, taking the reference to heraldic shading from the draft advertisement for insertion in the Trade Marks Journal. It also seems clear to us that a person searching the Register would not be misled by the reference to heraldic shading, which is obviously a falsa demonstratio . If he were unsure what colour was protected by the registration he could readily consult the TM3 application forms, which is commonly done. Mr RC Abnett, an experienced trade mark agent who gave evidence on behalf of BP, stated at paragraph 43 of his statement that to determine the colour used in a registration “it is necessary (as it always has been) to inspect the TM3 on the official Registry file” (cf his oral evidence at page 308 of the transcript) . Once an inquirer did so, he would have been left in no doubt what was applied for and registered.

28. We are unable to accept the point put forward by Mr Shipley that the registrations purported to include all shades of green. It is in our view sufficiently clear that they were of the shade of green shown in the coloured line drawings, which were intended to reproduce the shade classed as Pantone 348c. It is undeniable that colour reproduction may vary slightly according to the surface to which the paint is applied, and that the colour of a painted surface may alter with weathering, but it seems to us that this goes to infringement and the penumbra of protection and not to registration. The colour registered was in our opinion sufficiently defined as that shown in the coloured depictions.

29. The respondents then sought to define the mark in a narrow fashion, restricting it to service stations of Level 5 design, similar to that depicted in the certificates. The judge set out at page 27 of his judgment the parties’ respective contentions:

30. The judge accepted the respondents’ argument on this point, emphasising that the registration as a monopoly should be strictly construed. He held at page 28 of his judgment:

31. We are unable to agree with the judge’s conclusion on this issue. We consider that on their true construction the certificates, like the TM3 forms, extend to the use of the depicted shade of green on premises in general used for the sale of the goods or the supply of the services. In our opinion the depiction of the service station was only as a vehicle to show the surfaces to which the green colour was to be applied and the registration is not confined to the exact model of station shown in the pictures. We note that when the colours as applied to Glaxo inhalers and the Massey-Ferguson tractors were registered, the inhalers and the tractors were depicted schematically in the representations shown in the registration particulars. This appears to support the proposition that the depiction in such a case is not necessarily a representation of the exact object the colour of which is registered.

32. We then have to consider whether the marks were properly registrable as having a sufficiently distinctive character. The judge expressed a degree of doubt whether they would be sufficiently distinctive if they were defined in the way for which BP contended and which we have accepted. BP as the proprietor of the trade marks enjoys the benefit of the presumption of their validity contained in section 72 of the 1994 Act. Under paragraph 10(1) of Schedule 3 to the Act, as we have stated, the marks when registered under the 1938 Act are treated as existing registered marks, which have effect by virtue of paragraph 2(1) as if registered under the 1994 Act. The respondents seek a declaration of invalidity under section 47(1) of the 1994 Act, which provides:

33. Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.”

34. It is necessary for us to bear in mind the proviso, for even if the marks were not sufficiently distinctive at the time of application for registration or the time of final registration, if they have now acquired a distinctive character they are not to be declared invalid.

35. Trade marks are defined by section 1(1) of the 1994 Act in the following terms:

36. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.”

37. Section 3(1), so far as material, then provides:

38. Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.”

39. The test of distinctiveness applied by the European Court of Justice (ECJ) in Windsurfing Chiemsee Produktions v Huber [1999] ETMR 585 at paragraph 52 was whether “the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking”. In paragraph 29 of its judgment the Court defined the “relevant class of persons” as consisting of “the trade and ... average consumers of that category of goods in the territory in respect of which registration is applied for.” The Court expanded this definition in Lloyd Schuhfabrik Meyer & Co v Klijsen Handel [1999] ETMR 690, when it stated at paragraphs 22 and 23 of its judgment:

40. The House of Lords held in Smith, Kline and French Laboratories Ltd v Sterling-Winthrop Group Ltd [1976] RPC 513 that a colour combination could in appropriate cases be registered as a trade mark under the 1938 Act. It is now clear that a single colour or combination of colours may be registered under the wider definitions of a trade mark contained in section 1(1) of the 1994 Act and Article 2 of Directive 89/104. The Third Board of Appeal of the Office of Harmonization in the Internal Market (Trade Marks and Designs) so held in Orange Personal Communications Services Ltd’s Application [1998] ETMR 337, stating at paragraph 16 of its decision:

41. The Third Board examined the topic in more detail in Wm. Wrigley Jr Company’s Application [1999] ETMR 214 and affirmed at paragraph 19 of its decision that –

42. It went on to state in paragraphs 20 and 21:

43. The Board held in that decision that the colour of light green which Wrigley wished to register did not have any special peculiarity which could confer on it the minimum distinctive character necessary for protection under Article 7(1)(b) of the CTMR (paragraph 25). It stated at paragraphs 30 and 31:

44. The colour might, however, acquire distinctiveness in relation to the goods claimed in consequence of the use made of it (paragraph 32).

45. Mr Hobbs QC for BP drew to our attention some examples of colours registered as trade marks, which appear in the documents annexed to the statement of Mr Abnett. As long ago as 1965 Smith Kline & French Laboratories Ltd registered colours as applied to their capsules, and in 1975 the colour blue was registered as applied to Camping Gaz cartridges. Colours have been registered in respect of a range of other products, including the Glaxo inhalers and Massey Ferguson tractors to which we have referred.

46. In order to accept the registration of the colour green as applied to service stations the Registrar had to be satisfied that that colour by itself indicated BP’s service stations to the exclusion of all others. BP could not seek to sequester for its own use the whole range of shades of green, but we are satisfied that the registration was of the shade of green depicted in the registration documents, which is intended to equate to the shade Pantone 348c. The Registrar had accordingly to be satisfied that when a consumer saw a petrol station in that colour he would associate it at once with BP and no other concern retailing petrol in service stations, ie accepting the validity of the equation BP = green = BP. We do not accept that the colour was of a merely descriptive nature. It may have some associations with Irishness or environmental friendliness, but on the evidence those associations were minor and incidental. In our view it was distinctive enough to entitle BP to register it as a trade mark if the evidence was sufficient to establish the necessary association by consumers with BP stations. The question to be asked is whether the colour green on its own signifies BP when the logo is removed. That is essentially a question of fact for the Registrar, and apart from the statutory presumption we should be slow to declare his decision on registration invalid unless we felt that the evidence was seriously deficient.

47. The evidence relating to association may be summarised as follows:

48. There was evidence about the increase in BP’s sales after the Project Horizon had been completed, but it seems probable that this was the consequence of intensive advertising of BP petrol and we are not persuaded that it had much, if anything, to do with the colour branding.

49. The effect of section 72 of the 1994 Act is to impose the onus of discrediting the validity of the original registration upon the party who wishes to attack it; but once it is shown that it was wrongly made, if the owner of the mark wishes to establish that it has acquired distinctiveness the onus is on him: British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 302, per Jacob J. Much of the evidence in the present case tending to prove the distinctive nature of the mark dates from 1997 onwards. There is very little to show consumer association of the colour green with BP service stations in 1991, when the application for registration was made, or in 1995, when the mark was finally registered. If the matter were res integra and free of statutory presumption or a finding by the trial judge, we should have found it impossible to accept that the mark was sufficiently distinctive in 1991, and we should have had difficulty in agreeing that it had acquired such distinction by 1995, as the Registrar held. We do not need to reach any firm conclusion on that question, however, because we are prepared to hold that BP had by the time the present proceedings were commenced established sufficient consumer association to satisfy the test contained in the proviso to section 47(1), that in consequence of the use which had been made of it, it had after registration acquired a distinctive character.

50. The respondents pleaded a number of objections to validity based on bad faith, invoking section 3(6) of the 1994 Act. Not all of these were pursued at the hearing of the appeal. The objection that BP had at the time of registration no intention of making any genuine use of the marks in any shade of green other than “the Plaintiff’s green” is predicated upon the proposition that the definition of the mark as registered encompassed all shades of green. As we have held that it was confined to the shade depicted, ie Pantone 348c, this objection fails.

51. The argument advanced before us on the issue of bad faith resolved itself into the contention that since BP had no intention of using the colour green on the surfaces of the service stations without any other added matter, but intended always to superimpose its logo and other wording on the green painted surfaces, the marks were registered in bad faith. The judge rejected this argument, we think correctly. As he stated at page 29 of his judgment, it has commonly been the practice, certainly until the passing of the 1994 Act, to register a mark even if it is intended to use it in conjunction with some other material in the nature of a trade mark. The registration and use of the labels on the Levi’s jeans, the subject of Levi Strauss & Co v Shah [1985] RPC 371, form a good example. Another may be found in bottles of a distinctive shape containing soft drinks: the shape of the bottle or its colour may be registered as a trade mark, but it is always completely certain that the manufacturer’s name or logo, generally also registered, will appear on the bottle. The judge held that there was nothing in Directive 89/104 or the decisions of the ECJ which threw any doubt on the correctness of registering marks which were always intended to be used in conjunction with other indicia. Mr Shipley did not cite any such authority to us and we have found none. We agree with the judge’s conclusion that the plea of bad faith on this ground has not been made out.

52. The case was pleaded under section 10(1) and 10(2) of the 1994 Act, but the judge held at page 31 of his judgment that Kelly’s livery was not identical with BP’s trade marks and consequently that section 10(1) did not apply. On appeal before us counsel for BP did not seek to challenge this ruling and relied only on section 10(2), which reads:

53. The learned judge held at page 42 of his judgment that on the assumption, as he held, that the registered marks were the use of the colour green as applied to the surfaces of Level 5 service stations, and taking into account the circumstances, including the way that BP uses the marks in conjunction with other marks, BP had not satisfied him that there was a likelihood of confusion between the BP trade marks and Kelly’s livery and layout.

54. Authoritative guidance as to the interpretation and application of the provisions of Directive 89/104 implemented in section 10 of the 1994 Act was given by the ECJ in paragraphs 17 to 27 of its judgment in Lloyd Schuhfabrik Meyer GmbH v Klijsen Handel BV [1999] ETMR 690, which summarises principles established by earlier cases, and which we quote in full:

55. The principles to be applied, derived from the ECJ’s guidance, are conveniently and succinctly set out in the Trade Marks Registry’s list of criteria for determining whether there is a likelihood of confusion:

56. Two issues were raised in argument in relation to whether the respondents’ use of the colour green on their service stations constituted an infringement: (i) whether the use of a sign has to be use in a trade mark sense (ii) whether in assessing the likelihood of confusion arising from the respondents’ use of the mark added matter or circumstances should be discounted.

57. The first issue is whether to constitute infringement under the 1994 Act the use by a defendant of a sign must be in circumstances where it is used in the course of his business to indicate a commercial connection with the goods or services, ie use as a trade mark. It cannot yet be regarded as settled whether this is so, on the true construction of sections 9 and 10 of the 1994 Act in the light of the tenth recital to Directive 89/104. The weight of authority in the United Kingdom authority, notably the expression of opinion of the Court of Appeal in Philips Electronics NV v Remington Consumer Products [1999] RPC 809, is in favour of the proposition that use does not have to be trade mark use to constitute an infringement. We were informed, however, that various questions have been referred in the Philips case to the ECJ and that a decision from that court is awaited.

58. It does not seem to us that the issue needs to be determined in order to resolve the present case. It is clear from the evidence about the choice of colour for the painting of the TOP service stations that green was chosen in order to indicate their commercial connection with the brand of petrol sold there. The object was to make the motorist identify the colour with the stations and it seems to us indisputable that such use was use in a trade mark sense. If the ECJ decides in the Philips reference that to constitute an infringement use must be in a trade mark sense, the use by the respondents will still qualify.

59. The second issue is whether a defendant who uses another’s registered mark can rely by way of defence to proceedings for infringement on the fact that he is using other material with the mark which serves to distinguish it from the mark as used by the proprietor. Specifically, in the present case it was submitted on behalf of the respondents that even if they use a shade of green which is protected by registration, the fact that the logo “top” is used in conjunction with it has to be considered in determining whether any likelihood of confusion exists.

60. Under the 1938 Act it was settled law that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor: see Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 at 161, per Greene MR. The same conclusion has been reached in a number of cases under the 1994 Act. In Origins Natural Resources Inc v Origin Clothing Ltd [1995] FSR 280 at 284 Jacob J said that section 10 of the 1994 Act –

61. There is no contrary authority at any level in the United Kingdom and counsel were unaware of any case in which a reference had been made on the issue to the ECJ. If the decision in Levi Strauss & Co v Shah [1985] RPC 371 remains good law, as the judge concluded, then it would follow that use of a registered mark with additions, whether by the proprietor or the offender, is to be regarded as use of the mark. We can see no compelling reason in principle why it should not be, and a conclusion to the contrary would deprive the proprietor of a registered mark of much of the protection which he should receive in consequence of registration. We consider that this is not only consistent with the wording of Article 5(1) of Directive 89/104, but that that wording, “the registered trade mark shall confer on the proprietor exclusive rights therein”, points positively towards the conclusion that added matter or circumstances should be discounted in a case such as the present. We therefore do not propose to make a reference to the ECJ for a preliminary ruling on the interpretation of the Directive.

62. We come then to apply these principles to the facts of the present case. BP relied upon a number of factors in support of its case for infringement:

63. Mr Hobbs emphasised the point 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 descry the logo as he nears the station and appreciate that the petrol on sale is that of the respondents and not of BP. As he put it, the antidote to the bane has not been applied and that is a customer lost. We consider that there is force in this contention. BP is entitled to add to it the evidence of actual confusion, relatively slight though it is.

64. When we take the relevant factors all into account and look at the case globally, as we are enjoined by the ECJ to do, we are of opinion that it has been established that there exists a likelihood of confusion on the part of the public. We therefore conclude that BP has made out a case of infringement on the part of the respondents of its registered marks.

65. The conclusion which we have reached on infringement makes it unnecessary to reach a finding on the issue of passing off, but since the issue was fully argued before us we shall express our opinion on it as shortly as we can.

66. The “classical trinity” of elements to be established by the plaintiff in a passing-off action were reaffirmed by the House of Lords in the “Jif Lemon” case, Reckitt & Coleman Products Ltd v Borden Inc [1990] RPC 341. Lord Oliver set them out at page 406:

67. Deception or its likelihood lies at the heart of the tort of passing off: Kerly’s Law of Trade Marks and Trade Names, 13^th ed, para 14-257. If consumers are not deceived by the misrepresentation, to the consequent damage of the plaintiff, the cause of action has not been established. The respondents’ case, which the judge accepted, was that only “morons in a hurry” could be deceived into thinking that they were purchasing BP petrol and not TOP when they came to the station, with its conspicuous MID and the “top” brand name blazened all round. As Mr Golsong accepted in the course of his evidence, a customer who confused Kelly with BP at the point of buying petrol would, even if he were in a hurry, have to be fairly stupid or fairly uncaring.

68. Mr Hobbs’ riposte to this was to rely again on the proposition that the misrepresentation involved in the predominantly green get-up of the service stations seen from a distance was sufficient to deceive motorists into making preparations to pull off to buy petrol, and that although a normally observant person would realise by the time he actually pulled in to the station that it sold “TOP” and not BP petrol, the damage was done when he was lured off the road. Although Mr Hobbs argued persuasively that the law should afford a remedy in such circumstances, we are not satisfied that his proposition is justified on the law as it stands. We consider that it is a necessary ingredient of the tort 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. As Lord Jauncey said in the Jif Lemon case at page 417, “Mere confusion which does not lead to a sale is not sufficient”. If the customer can see sufficiently clearly when he gets close to the 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 into the tank of his vehicle. In these circumstances the tort of passing off has not in our view been committed.

69. For the reasons which we have given we shall allow the appeal and grant appropriate relief to the appellant. We shall hear counsel on the form of the order and costs. We also confirm our order under RSC (NI) Order 24, rule 17 regarding confidentiality of documents in the case.