The return of Ampol but you might notice some changes

What you need to know

• Under the terms of a Trade Mark Licence Agreement (TMLA), Chevron had granted Ampol the right to use the CALTEX brand and other related trade marks (Licensed Marks).
• In December 2019, Chevron terminated the TMLA and Ampol began to transition the branding of its service stations from Caltex to Ampol.
• Chevron alleged that Ampol had breached the TMLA, contravened the Australia Consumer Law and infringed its registered trade marks.
• Chevron's application to restrict Ampol's use of the red coloured canopy fascia was unsuccessful and the Court also dismissed the claims that Ampol had engaged in misleading conduct.
• However the Court did find that Ampol's use of the StarCard mark in specific instances of advertising had breached the TMLA and therefore made infringing use of Chevron's registered marks. To that extent, Ampol has been restricted from use of the ‘StarCard’ trade mark in some advertising.

What you need to do

• Any licensee should carefully consider the scope of the rights contemplated by the licence arrangement, including understanding the particular IP covered by the licence and how the IP can be used.
• Before taking steps to enforce IP, ensure that you can in fact demonstrate your ownership of that IP. It is also important to think strategically around the precise conduct that is alleged to be infringed.

Background

Chevron Global Energy Inc and Ampol Australia Petroleum Pty Ltd had been competitors in the Australian fuel market with Chevron operating its service stations under the Caltex brand and Ampol using the Ampol brand on its service stations.

In 1995, the entities merged as Caltex Australia Limited. Following the merger, Ampol rebranded all but 10 of its service stations in its network from Ampol to Caltex.

In 2015, Chevron divested its stake in Caltex Australia Ltd and the parties entered into a Trade Mark Licence Agreement (TMLA) which allowed Ampol to continue using the Caltex trade mark and related trade marks (Licensed Marks).

In December 2019, Chevron issued a notice terminating the TMLA and triggering the work-out provisions in the agreement under which Ampol would have exclusive rights to use the Licensed Marks until 31 December 2021. Both Chevron and Ampol could use the Licensed Marks from 1 January 2022 until 31 December 2022 (Work Out Period). After this date, Ampol would no longer be authorised to use the Licensed Marks.

Following receipt of the notice of termination, Ampol decided to transition its business back to the Ampol brand and had rebranded 79 of its previously Caltex branded sites by March 2021.

Alleged conduct

Chevron alleged that Ampol had breached the TLMA, infringed Chevron's registered trade marks, and contravened the Australian Consumer Law by:

• continuing to use a red coloured canopy fascia as part of its re-branded Ampol service stations;
• continuing to promote and accept the Caltex StarCard loyalty card at re-branded Ampol service stations; and
• continuing to use Caltex and StarCard trade marks in conjunction with Ampol trade marks.

Decision

Red canopy fascia

Chevron alleged that the red canopy fascia (described in the pleadings as Caltex Red) was a key element of Caltex's visual identity over the last 25 years and sought to restrain Ampol from using the Caltex Red on the fascia of canopies in conjunction with the Ampol logo.

As Chevron did not have registered trade mark rights for the colour red in respect of service stations (or at all), it could not rely on trade mark infringement claims.

The Court considered the obligation in the TMLA that required Ampol to remove "signage and/or any other element displaying the trade marks" to be directed precisely at the thing that was coming to an end, namely the licence to use the registered trade marks and held that Ampol did not breach any provisions of the TMLA by its decision not to repaint the red coloured fascia upon the termination of the TMLA.

Although the Court acknowledged that a trader may be able to establish reputational rights in get-up including a colour scheme, Chevron had not provided any consumer or survey evidence to support the suggestion that consumers would associate a red canopy with Caltex. Furthermore, even if Chevron's arguments that the colour red on a canopy facilitated the identification of the CALTEX word mark could be accepted, the Court found it "improbable" that a consumer of Ampol fuel products could see the colour red on the canopy but at the same time pay no regard to the distinctively different Ampol signage.

The Court therefore concluded that "no reasonable consumer was likely to think that there is any relevant association between the two entities or that the Caltex and Ampol brands are from the same stable". Accordingly, it held that Ampol's continued use of the red canopy fascia did not constitute misleading or deceptive conduct under the Australian Consumer Law.

Use of the StarCard and Caltex trade marks

The Court similarly dismissed Chevron's allegation that Ampol's use of the Licensed Marks – CALTEX and STARCARD in conjunction with the Ampol marks AMPOL and AMPOLCARD on fuel cards would convey the representation that the Caltex marks and the Ampol marks are owned by the same entity, or by entities which are associated, affiliated or otherwise connected.

Tellingly, the Court noted that Ampol has, without objection, issued in accordance with the TMLA over a million StarCard branded cards over the course of the last 25 years which, for at least the last 15 years, have borne the words prominently on the reverse side “This card is accepted at Caltex and Ampol locations”. The Court considered that it would be obvious to a reasonable consumer of retail fuel products that "branded methods of payment may be accepted by businesses that are unrelated to the owner of the payment method brand" particularly given other examples "from everyday experience" including gift cards from shopping centres and toll road payment systems.

However the Court did find that there were instances where Ampol's use of the StarCard trade mark at Ampol branded service stations breached the TMLA, including advertisements that said:

• "StarCard accepted here"; and
• "StarCard will be accepted at Ampol branded sites".

This is because the TMLA placed an obligation on Ampol during the Work Out Period that it would "use the [Licensed Marks] in conjunction with its own trade marks…for the sole purpose of educating customers that it is transitioning away from the [Licensed Marks]".

The Court considered that advertising and offering to accept a StarCard in relation to provision of services under the Ampol name for Ampol products served a commercial use and was not therefore "for the sole purpose of educating customers". Because the use of the StarCard mark in these advertisements was not authorised by the TMLA, it necessarily followed that Ampol had infringed Chevron’s trade mark registration for StarCard.

Consequently, Ampol was ordered to cease using the statement ‘StarCard accepted here’ or words to that effect, in banners at Ampol branded locations or in advertising regarding Ampol branded locations, with effect from 2 August 2021.

Authors: Helen Wei, Graduate; Maria Sun, Senior Associate; and Anita Cade, Partner.