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a fight on the tiles

29 November 2013

On introducing the 2011 Sir Hugh Laddie Lecture , Sir John Mummery asked plaintively:

“Why [should] such a simple idea as having a sign to signify the source of goods or services become such a complicated, uncertain, unpredictable, area of law? … Why has a subject which is all about preventing confusion itself become confused and confusing? I don’t know about too many trade marks; but there are certainly too many cases that come out of this uncertainty”.

But the confusion continues, and has led Sir John to pass down judgment on three more trade mark cases. Two of them, Société Des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174 and JW Spear & Son Ltd v Zynga Inc [2013] EWCA Civ 1175 are the subjects of this article.

These two cases, which were heard at the same time, concern the registrability of exotic trade marks. ‘Exotic’ trade marks include colours, smells, sounds, and shapes. These marks are rare, , but statutes have been light on details about their registrability which has resulted in a disproportionate body of case law concerning them.

In the two recent decisions from the Court of Appeal, Cadbury were seeking to register a colour mark, for a shade of purple, and Mattel were seeking to overturn summary judgment in relation to whether or not a mark they had registered for a tile was valid.

Legal background

Article 2 of the Trade Marks Directive states that

A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

There are four decisions of the CJEU which are of particular relevance:

Sieckmann v. Deutsche Patent –und Markenamnt Case C-273/00

This concerned an application to register an olafactory mark by reference to a chemical formula. The CJEU held that “a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

Libertel Groep BV v. Benelux-Merkenbureau Case C-104/01

Libertel sought to register the colour orange as a trade mark, but did not include a Pantone reference – only a sample of the colour. The CJEU held that

“A colour per se, not spatially delimited, may, in respect of certain goods and services, have a distinctive character… provided that, inter alia, it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The latter condition cannot be satisfied merely by reproducing on paper the colour in question, but may be satisfied by designating that colour using an internationally recognised identification code”.

Heidelberger Bauchemie GmbH v. Bundespatentgericht Case C-49/02

Heidelberger Bauchemie GmbH first sought an application for a colour mark, constituting a pair of colours, back in 1995. It was initially refused for lack of distinctiveness and for being unable to constitute a trade mark. That decision was then reviewed in 1998, but stayed and referred to the ECJ. Advocate General Léger opined that Libertel should be revisited, and that colours in the abstract did not constitute a sign capable of graphical representation. The CJEU disagreed, and maintained that colours and combinations of colours were capable of being a sign. They also said that for combinations of colours to be registrable, they must be systematically arranged; a mere juxtaposition of colours, or a reference to two colours in ‘every conceivable form’, was not registrable as it was not sufficiently uniform and precise.

Dyson v. Registrar of Trade Marks Case C-321/03

In this case, Dyson sought to register a mark with the following description:

“The mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation”.

The CJEU held that the subject matter of the application was “not a particular type of transparent collecting bin forming part of the external surface of a vacuum cleaner, but rather, in a general and abstract manner, all the conceivable shapes of such a collecting bin”. So it was not capable of being perceived visually, it was not specific; and it was not a sign. It was therefore not capable of being protected.

Heidelberger and Dyson also make it clear that, for a trade mark to be registrable,

The mark must be for a sign; The sign must be capable of graphical representation; and The sign must be capable of distinguishing the goods or services as originating from a particular undertaking. It is also worth mentioning Starbucks v Sky [2013] EWCA Civ 1465. This is a Court of Appeal judgment of Sir John Mummery subsequent Mattel and Nestle, which neatly summarises the judicial approach to the monopolies granted by intellectual property rights:

"In their very nature exclusive rights are analogous to property rights in things generally and call for careful definition. It is necessary for a monopoly-like right to be identified with a reasonable degree of precision. Regard must be had to pervasive strands of permanence, stability and continuity in what is claimed as exclusive. Only then can the right claimed exhibit the characteristics of enforceability against infringers, assignable value and exploitation by dealings that give exclusivity its meaning and substance".

JW Spear v Zynga

In JW Spear v Zynga, Mattel were attempting to defend a mark which was illustrated by an image of a blank tile, accompanied by text which read “This mark consists of a three-dimensional ivory coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10”.

At first instance, Arnold J gave summary judgment that the tile mark was invalid because it was not a sign. The registration sought to cover an infinite permutation of sizes, positions, and letter and number combinations. It did not specify the size of the tile, or precisely specify the colour of the tile. The mark attempted “to claim a perpetual monopoly on all conceivable ivory-coloured tile shapes which bear any letter and number combination on the top surface”. Furthermore he held that upholding the registration “would allow Mattel to obtain an unfair competitive advantage”. Furthermore, the mark was invalid because the representation was not capable of being graphically represented – it was not clear, precise, intelligible or objective, and it was not possible to determine the scope of registration.

Whilst one might wonder whether Arnold was contending that trade marks –particularly three dimensional marks – should, in circumstances within which they might otherwise be given overly broad application, have to set out what size they will be used for, which seems unlikely, the conclusions he reaches in his judgment must be right; and subsequently on appeal, it was upheld in glowing terms.

Nestlé v Cadbury

So far, this seems quite straightforward. But of rather more interest was the case that accompanied it to the Court of Appeal. Cadbury sought to register a shade of purple with the following description:

“The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”.

Cadbury demonstrated to Allan James, sitting as the hearing officer, that they had acquired distinctiveness in the colour purple, as required by Libertel. Nestle argued that the mark was not a sign, and was not capable of graphical representation. They claimed that the “predominant colour” wording meant that the mark was for a combination of colours, and so had to comply with the Heidelberger Bauchemie rules.

Nestle’s claims were dismissed. Although the colour purple would be used with other material, the other material did not form part of the sign applied for, and so it was not appropriate to regard the mark as a combination of colours.

Mr. James explained that, had the mark simply been registered for the colour purple, it would not have been clear how much of the colour would be applied to the packaging of goods. And if, in order to register colours, it would be necessary to show exactly how a colour would be used for a particular product, the CJEU’s judgments “in Libertel and Heidelberger Bauchemie to the effect that it is possible to register colour in the abstract, would be undermined”.

Mr. James further held that the sample of colour provided with the mark satisfied the requirements of graphical representation, and that the addition of wording about it being the predominant colour did not make the application less clear or precise. Accordingly, he held the mark validly registered.

Nestlé appealed to the High Court, where HHJ Birss upheld Allan James’ decision, for much the same reasons. HHJ Birss particularly emphasised that that CJEU in Libertel had said that colour marks were capable of being signs and capable of being graphically represented, and Cadbury’s application suffered from no defects that were not inherent in such registrations. He agreed with Cadbury that the ‘predominant’ wording “simply made explicit what was implicit in the mark considered in Libertel”, and went to conclude:

“Since single colours per se are, as a matter of European law, capable of being signs within Art. 2 (i.e. they are capable of being a sign, capable of being represented graphically and capable of distinguishing) then, to paraphrase a little the words Cadbury have used in the description of the mark, in my judgment the colour purple (Pantone 2685C) applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of chocolate, is capable of being a sign within Art. 2… Since on the evidence the public associate the colour purple itself with Cadbury's chocolate, Cadbury are entitled to a registered trade mark for that colour on the relevant goods and that is the mark they have applied for”.

The Court of Appeal took a very different approach.

Sir John Mummery said that the application was not for a sign, and was not capable of graphical representation:

“the use of the word "predominant" opens the door to a multitude of different visual forms as a result of its implied reference to other colours and other visual material not displayed or described in the application and over which the colour purple may predominate. It is an application for the registration of a shade of colour "plus" other material, not of just of an unchanging application of a single colour, as in Libertel”… If the colour purple is less than total, as would be the case if the colour is only "predominant", the application would cover other matter in combination with the colour, but not graphically represented or verbally described in the specific, certain, self-contained and precise manner required. The result would not be an application to register "a sign", in the accepted sense of a single sign conveying a message, but to register multiple signs with different permutations, presentations and appearances, which are neither graphically represented nor described with any certainty or precision, or at all”.

However, trade mark convention holds that a word mark registered in block capitals covers use in any typeface. This does not mean that a trade mark registration for a word is imprecise. As Kerly says, “such a registration covers the word in a very wide range of typefaces. The variation in presentation is permissible because the distinctive character of the mark resides in the word itself and does not change”. Similarly, a registration for a device can be used in a variety of colours, and against any number of backgrounds. In each case, the registration and the scope of the monopoly is always limited to each trade mark, even though that mark is capable of serving its function as a badge of origin in a multitude of different ways.

In the same way, arguably, a registration for purple as a ‘predominant’ colour would not be for “other matter in combination with the colour”; it would simply be for the purple; and the distinctive character of the mark would reside in the particular shade of purple, and would not change. This was recognised by Allan James, and recognised by HHJ Birss. Of course, this is not Sir John’s view, since he states explicitly that, “if the colour is only "predominant", the application would cover other matter in combination with the colour.”

Sir Timothy Lloyd reiterated the Libertel view that colour marks were capable of being registered; but only if a colour has become distinctive, in which case the registration must still “satisfy the tests of being clear, precise, self-contained, easily accessible, intelligible, durable and objective, and that to reproduce the colour on paper is not enough, whereas reference to a suitable code may be”. Sir Timothy held that Cadbury’s mark did not meet these criteria.

Cadbury’s head of licensing had stated that the colour could be the predominant colour even if the colour was merely the strongest or most eye-catching colour on the packaging. Sir Timothy’s view was that this meant the word ‘predominantly’ caused the mark to be ‘too subjective, too imprecise, and inadequately clear and intelligible, to be capable of registration’. Sir Timothy suggested that the required clarity could have been achieved by stating that the registration was for the colour applied to more than 50% of a surface area.

However, this proposed alternative also seems to fall foul of Sir John’s criticism; as being a colour applied to more than 50% of a surface area would again “cover other matter in combination with the colour, but not graphically represented or verbally described in the specific, certain, self-contained and precise manner required”.

A term such as ‘predominant’ is not absolutely precise; but there is an element of imprecision in any colour trade mark, and particularly in trade marks for colour ‘per se’. It will be interesting to see whether, such marks, which are now being granted fairly regularly by the OHIM, are found valid by the English courts. As Allan James said, if Cadbury had applied for the mark without qualification, the same criticisms of the application could have been made:

“It would not have been clear from the representation how (or even whether) the colour would be applied to the packaging of the goods. Nor would it have been clear how much of advertising materials, business papers or point of sale displays would have to be covered in the colour before it should be counted as use of the mark. In the event of a claim for infringement, a judgment would have had to have been made (as it is with every mark) as to whether, inter alia, the prospective infringer’s use constituted the use of a sign and whether such use was liable to affect the functions of the registered trade mark.”

Whilst following these decisions colours clearly remain registrable, it appears that the bar that they must reach in order to be considered sufficiently precise, clear and intelligible has been raised. Whether or not all of the registrations for colour marks that are currently on the UKIPO and OHIM registers would meet that bar is a question that one cannot help but ask. What is clear is that the term “predominantly” is no longer an acceptable feature of a trade mark specification. What is not clear is what the courts will accept in its place. So, from a position of apparent clarity, we have again reached a situation which is complicated, uncertain, and unpredictable; and one should expect further cases to come out of this uncertainty.

This article was co-authored by Giles Parsons and Alex Watt and was first published in European Intellectual Property Review

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