Fuel Duel – Chevron Global Energy Inc v Ampol Australia Petroleum Pty Ltd [2021] FCA 617

23rd July 2021

Chevron has been partly successful in litigation stemming from the transition of Caltex branded service stations to Ampol branded service stations in Australia.

The Federal Court of Australia has found that aspects of Ampol’s conduct breached a Trade Mark Licence Agreement (TMLA) between the parties and constituted trade mark infringement.

In 1995, Chevron, which formerly operated service stations under the Caltex brand, merged with its competitor Ampol. As a result, Ampol rebranded most of the service stations to the Caltex brand.

In 2015, Chevron divested its stake in Ampol and the parties entered into the TMLA. Under the TMLA, Ampol was granted a licence to use the Caltex trade mark and other related marks (Licensed Marks).

On 20 December 2019, Chevron gave notice that it was terminating the TMLA without cause.  As part of termination, a phase out period was established.  Ampol had the exclusive rights to use the Licensed Marks until 31 December 2021. From 1 January 2022 until 31 December 2022 both Ampol and Chevron were permitted to use the Licensed Marks. Following this period, Chevron could use the Licensed Marks in any manner of its choosing and Ampol could no longer use them.

Following the notice of termination, Ampol decided to transition its business to its own Ampol brand.

The claims

Chevron initiated legal proceedings against Ampol for breaching the TMLA, trade mark infringement and contravention of the Australian Consumer Law. These claims were based on Ampol’s:

• use of red coloured canopy fascia as part of its re-branded Ampol service stations;
• continued use of the Caltex StarCard loyalty card; and
• use of the Licensed Marks in conjunction with the Ampol mark in messaging while transitioning from Caltex to Ampol.

Findings

Justice O’Callaghan held that Ampol did not breach the TMLA by continuing to use the red coloured canopies. Under the TMLA, Ampol had to remove signage or any element bearing any of the licensed trade marks. However, there was no obligation for Ampol to cease using red coloured canopies.

His Honour also found that Ampol’s continued use of the red coloured canopies did not constitute misleading or deceptive conduct in contravention of the Australian Consumer Law, as when viewed as a whole, no reasonable consumer was likely to think there was any relevant association between Caltex and Ampol by virtue of the use of the red coloured canopies.

His Honour found that Ampol’s use of the 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.

Impacting on this finding was the fact that Ampol had issued, with no objection, over a million STARCARD branded cards which had on them the prominent words “This card is accepted at Caltex and Ampol locations”.

His Honour considered that where a card is accepted for payment in numerous places a consumer would understand that there is a commercial relationship between the owners of the respective trade marks and that consumers understand that branded methods of payment can be accepted by businesses that are unrelated to the owner of the payment method brand.

However, his Honour found that Ampol’s use of the registered trade marks CALTEX and STARCARD in conjunction with the Ampol marks AMPOL and AMPOLCARD did breach the TMLA.

In particular, clause 14.4 of the TMLA, which provided that Ampol was only permitted to use the Licensed Marks in conjunction with its own trade marks during the phase out period for the sole purpose of educating customers about its transition to the Ampol brand.

His Honour considered that advertising and offering to accept a Caltex STARCARD in relation to provision of services under the Ampol brand was not a use of the Licensed Marks within the meaning of clause 14.4 of the TMLA. Rather, this was a commercial use, not an educative use.

This use in relation to “financial services”, being the services for which STARCARD is registered for, also constituted trade mark infringement. 

Although trade mark infringement was established, as with the other findings in relation to the Australian Consumer Law, his Honour held that the use of STARCARD by Ampol did not contravene the Australian Consumer law.