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Trade mark challenges - IP case law update

17 May 2013

The past 12 months have seen several trade mark challenges involving well–established brands. Here we take a look at a few interesting cases.

J.W. Spear & Sons Ltd & Others v Zynga Inc [2012] EWHC 1374 (Ch)

Judgment was given in respect of the defendant’s counterclaim to allegations of having infringed the claimants’ Scrabble tile mark. The mark was described as “a three dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a number in the range of 1 to 10”.

The High Court ruled that a shape mark registration for a tile was invalid as it did not have sufficient distinctive character and failed to comply with Article 2 of Directive 2008/95. The court held that the mark was not a sign, nor was it capable of being represented graphically with sufficient clarity, precision, intelligibility or objectivity. The mark covered a multitude of different appearances of tile and it did not permit the consumer, competent authorities or competitors to perceive any specific sign.

Société des Produits Nestlé S.A.v Cadbury UK [2012] EWHC 2637 (Ch)

Cadbury’s successfully defended a challenge from Nestlé against its trade mark registration for a specific shade of purple.

The court rejected Nestlé’s appeal that colours could not be practically trademarked for commercial advantage and ruled that single “colours are capable of being signs” under EU law. It was held that Cadbury had developed sufficient reputation in the colour through its use of shade Pantone 2685C for over 90 years.

However, Cadbury’s victory was only a partial one, as the above finding of distinctiveness only applied to Cadbury’s range of milk chocolate and not to its dark or white chocolate ranges.

Christian Louboutin SA v Yves Saint Laurent America Holding Inc 11-3303-cv

The US appeal court was asked to decide whether Louboutin was entitled to protection for red soled shoes. This review was undertaken following a challenge from rival Yves Saint Laurent. The court found that the Louboutin red sole has taken on a “secondary meaning” as a distinctive symbol of the brand. The registration remains valid although it has limited protection as the court held that the trade mark registration is not infringed where both the shoe and sole is red.


The cases above show that trade mark protection can be obtained for a number of aspects of a brand (i.e. shape, colour) and many businesses will be keen to capitalise on this. However, the above cases also demonstrate that such unusual trade marks are likely to be subject to challenge by competitors where they potentially restrict the reach of competitors’ own brands (as with Nestle and the colour purple), and so businesses should consider the potential cost of defending such a challenge, or of challenging a competitor’s mark on the basis of their own unusual mark.

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The content on this page is provided for the purposes of general interest and information. It contains only brief summaries of aspects of the subject matter and does not provide comprehensive statements of the law. It does not constitute legal advice and does not provide a substitute for it.

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