What links a Scrabble tile and Cadbury's purple? (hint, think trade marks)

 The Court of Appeal has recently shed some light on tricky issues around trade mark registration - specifically the meaning and scope of the requirement for 'graphic representation'. The two appeals, Societe des Produits Nestle SA v Cadbury UK Ltd [2013] EWCA Civ 1174 and JW Spear & Son Ltd v Zynga Inc [2013] EWCA Civ 1175 were brought together by the Court of Appeal because of the similarity in legal issues.

What exactly was the issue on appeal?

The Court of Appeal had to determine the contested trade mark application for Cadbury's purple colour and the validity of the registration for a Scrabble tile. Specifically, the court had to consider whether the lower courts had misapplied Directive (EC) 2008/95 (the Directive) and the Trade Marks Act 1994, s 1(1) which define a trade mark as:

  • a sign
  • capable of being represented graphically, and
  • capable of distinguishing the goods or services of one undertaking from those of other undertakings

Case law has helped to flesh out what these requirements mean in practice and established that colours per se are capable of registration (Heidelberger Bauchemie GmbH: C-49/02 [2004] All ER (D) 268 (Jun) and Libertel Groep BV v Benelux-Merkenbureau: C-104/01 [2004] IP & T 187)

Why did the Court of Appeal reverse the High Court’s decision on Cadbury’s registration of the colour purple?

A bit of history: in 2004 Cadbury applied to register a trade mark for the colour purple (pantone 2685C) that ‘applied to the whole visible surface, or being the predominant colour applied to the whole visible surface of the packaging of the goods’. Nestle objected that Cadbury’s application was too vague, particularly use of the word ‘predominant’ which was subjective and could in theory protect any colour combination as long as it included purple.

In the High Court (Societe des Produits Nestle SA v Cadbury UK Ltd [2012] EWHC 2637 (Ch), [2012] All ER (D) 06 (Oct)) Birss J rejected Nestle’s argument stating that the word predominant ‘does not introduce any more vagueness or uncertainly than is already present and acceptable in a trade mark registration of this kind’ (implication that some level of vagueness is acceptable or desirable in trade mark applications?).

The Court of Appeal  reversed the High Court’s decision finding that the word predominant could give rise to a myriad of colour combinations and permeations. This decision is to be welcomed - trade mark registrations are supposed to be clear and self-contained in order to enable third parties to ascertain the limits of that trade mark by reference to the registration alone.

However,  this ruling leaves the door open for challenges to existing trade mark registrations with similarly vague descriptions. It is for the courts to determine what level of uncertainty, if any, can be tolerated.

And what about the Scrabble tile mark?

This appeal concerned a slightly different aspect of the application of art 2 of the Directive—whether or not evidence of acquired distinctiveness was relevant.

The disputed trade mark registration comprised images of a blank ‘ivory-coloured’ Scrabble tile with the description ‘on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1–10)’. The High Court ruled that the registration fell foul of art 2—there was no clear graphic representation because the registrations covered all sizes of tile with any combination of letters or numbers displayed on the tile surface.

This time the Court of Appeal affirmed the High Court’s judgment, citing Dyson Ltd v Registrar of Trade Marks [2007] IP & T 550 which ruled that it was unnecessary to consider the issue of acquisition of distinctive character when the mark in question does not satisfy the requirements of art 2. The message is clear—even if there is evidence that consumers associate a particular sign with a business, it does not compensate for inadequate graphic representation in the trade mark registration.

[caption id="attachment_2761" align="alignnone" width="171"]Scrabble tiles in action Scrabble tiles in action[/caption]

Following these decisions, what can lawyers learn about protecting colours as trade marks?

Following the line of CJEU cases affirmed by these two Court of Appeal decisions, there is no doubt that a colour can be a sign and therefore satisfy the first condition of art 2. The difficulty with colour registrations is the second condition of art 2 (capable of graphic representation). Some key considerations

  • Include a colour image in the trade mark application. In the verbal description specify a pantone so there can be no doubt about the choice of colour. If you are applying for a combination of colours the representation must also include a systematic arrangement associating the colours in a predetermined and uniform way (Heidelberger).
  • In the description avoid subjective words like 'predominant' or 'mostly' which don't have a precise meaning and wouldn't express the limits of your trade mark. Instead use an objective term - in Cadbury one of the judge considered the use of a specific percentage, for example. A diagram showing the application of colour would also help (such as the trade mark registration for the famous red soled Louboutin shoes).
  • Be careful when following guidance issued by the Intellectual Property Office (IPO) or other trade mark registries. Arguably the IPO guidance issued in 1997 was wrong - it suggests use of the word ‘predominant’ in trade mark descriptions and yet this proved to be a thorn in Cadbury’s side when the matter played out at court.
  • While evidence of acquired distinctiveness undoubtedly supports other aspects of a trade mark application, it won't help you overcome the first hurdle - showing that the mark is a sign capable of being represented graphically.
  • If in doubt, revisit the criteria laid down in Sieckmann v Deutsches Patent-und Markenamt: C-273/00 [2004] All ER (EC) 253—trade marks should be: clear, precise, self-contained, easily accessible, intelligible, durable and objective.

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