Chevron Global Energy Inc v Ampol Australia Petroleum Pty Ltd  FCA 617 (8 June 2021)
Chevron was partly successful in a dispute arising from the transitioning of Caltex branded service stations to Ampol branded service stations. O’Callaghan J found certain aspects of Ampol’s conduct breached the Trade Mark Licence Agreement (TMLA) and constituted trade mark infringement. Damages are to be assessed separately.
Before 1995, Chevron and Ampol were competitors in the Australian fuel market. The former operated service stations under the Caltex brand, the latter under the Ampol brand. In 1995, the two competing businesses were merged. From the late 1990s, Ampol rebranded most of the service stations in its network to the Caltex brand and, as a result, the Ampol brand all but disappeared from the Australian market. In 2015, Chevron divested its investment in Ampoln and the parties subsequently entered into a Trade Mark Licence Agreement (the TMLA), which licensed Ampol to use the CALTEX trade mark and other related marks. On 20 December 2019, Chevron gave notice that it was terminating the TMLA and Ampol decided to transition its business to its own Ampol brand. As a result, Ampol has the exclusive rights to use the licensed trade marks until 31 December 2021 (being the Exclusivity Period), and Ampol and Chevron can both use the licensed trade marks from 1 January 2022 until 31 December 2022 (being the Non-exclusivity Period). After that date, the relevant Work-out period will end and Chevron will be free to do as it wishes with the marks.
Causes of action
There were 3 primary aspects of Ampol’s conduct in dispute:
Firstly, the use by Ampol of a red coloured canopy fascia as part of its re-branded Ampol service stations . Red coloured fascias had appeared on Caltex service stations over the last 25 years. Up to 1995, Ampol service stations had a blue coloured fascia.
Secondly, the continued use by Ampol of the Caltex StarCard loyalty card at re-branded Ampol service stations.
Thirdly, the use by Ampol of the Caltex registered marks in conjunction with the Ampol mark in messaging while transitioning from Caltex to Ampol branding.
Chevron alleged Ampol’s conduct breached the TMLA, contravened the Australian Consumer Law (ACL) and infringed its registered trade marks.
O’Callaghan J construed the TMLA and concluded that Ampol did not breach the TMLA by continuing to use the red coloured fascia. The obligation to remove “signage and/or [any] element bearing [or displaying]” any of the registered trade marks the subject of the TMLA did not require Ampol to change the red coloured fascia. Caltex had no registered or unregistered claim to that colour and the TMLA never purported to license its use.
Further, his Honour found that Ampol’s retention of the red coloured fascia was not misleading or deceptive conduct in contravention of the ACL.
As a general concept, it was acknowledged that a trader may establish a reputation in trade indicia or get-up that may include a colour scheme, which can constitute a significant component of the get-up used to attract consumer attention and the get-up, including a colour scheme, may acquire a reputation distinct from any trading name. However, the proposition that it is likely that consumers will associate the red canopy with Caltex is not the same thing as saying that consumers are likely to think that there is an association between the Ampol and Caltex brands. O’ Callaghan J considered that, when viewed as a whole, no reasonable consumer is likely to think that there is any relevant “association” between the two entities, let alone that the Caltex and Ampol brands hail from the same stable.
Examples of the respective service station get-up are shown below:
O’Callaghan J also considered that Ampol’s use of the Caltex registered marks CALTEX and STARCARD in conjunction with the Ampol marks AMPOL and AMPOLCARD did not 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.
Significantly, 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”.
Chevron alleged that certain Ampol communications used the terms “we”, “Caltex” and “Ampol” synonymously, which conveyed “the impression that the brands are under the same or associated ownership … such that the transition to the Ampol brand involves the retirement of the Caltex brand from the Australian market”.
His Honour considered it obvious that when a fuel card is accepted for payment in either of those two particularised cases “a consumer would understand that there is a commercial relationship or association of some kind between the owners of the respective trade marks, because if there were not such a relationship or association, the relevant fuel card would not be accepted for payment”. However, it is equally obvious that a reasonable consumer of retail fuel products is unlikely even to wonder whether the two brands are owned by the same entity because “consumers understand from everyday experience that branded methods of payment may be accepted by businesses that are unrelated to the owner of the payment method brand”. Ampol referred, by way of example, to gift cards from shopping centres and toll road payment systems.
However, his Honour found that Ampol’s use of the Caltex registered marks CALTEX and STARCARD in conjunction with the Ampol marks AMPOL and AMPOLCARD did breach the TMLA.
The relevant provision of the TMLA, namely cl. 14.4, was that “[Ampol] shall be permitted to use the Trade Marks in conjunction with its own trade marks during the Work-out Period … for the sole purpose of educating customers that it is transitioning away from the Trade Marks. [Ampol] shall ensure that its use of the Trade Marks in this manner does not damage the value or distinctive character of the Trade Marks.”
O’Callaghan J considered Ampol’s use of the STARCARD mark at its Ampol branded service stations in a banner that says “StarCard accepted here” and in advertising which says that “StarCard will be accepted at Ampol branded sites” are uses of StarCard “in conjunction with” Ampol trade marks within the meaning of cl 14.4 of the TMLA. Further, his Honour considered that advertising and offering to accept a Caltex StarCard in relation to provision of services under the Ampol name for Ampol products is not a use of the marks in conjunction “for the sole purpose of educating customers” within the meaning of cl 14.4 of the TMLA. Rather, such use is a commercial use, not an educative one.
It necessarily followed that his Honour found Ampol has used the STARCARD mark as a trade mark in relation to a financial service without authorisation from Chevron which infringed Chevron’s trade mark registration covering this service.
Although infringement was established, his Honour found Ampol’s use of the mark STARCARD at its Ampol branded service stations in a banner that says “StarCard accepted here” and in advertising which says that “StarCard will be accepted at Ampol branded sites” did not constitute misleading or deceptive conduct within the meaning of s 18 of the ACL or convey a false or misleading representation within the meaning of s 29 of the ACL.