Registering trademarks: UK court sets boundaries

By Joel Smith (Partner) and Sarah Burke (Senior Associate), Herbert Smith Freehills LLP, London

On 4 October 2013, the Court of Appeal handed down judgments in the cases of Société des Produits Nestlé SA v. Cadbury UK Limited [2013] EWCA Civ 1174 and JW Spear & Sons Limited & Ors v. Zynga Inc. [2013] EWCA Civ 1175, with Sir John Mummery delivering the leading judgments. The two cases dealt with a similar point of principle and were heard by the same court.

In both appeals, there was an issue on whether there was "a sign" registrable as a trade mark in accordance with the requirements of Article 2 of the Trade Marks Directive 2008/95/EC (the "Directive"), as interpreted in the judgments of the Court of Justice of the European Union (CJEU). The Nestlé v Cadbury judgment is the leading judgment which considers the Article 2 issues in full.

Nestlé v. Cadbury background

Cadbury had applied to register a trade mark for the color purple (Pantone 2685C) "applied to the whole visible surface, or being the predominant color applied to the whole visible surface, of the packaging of the goods" for a range of chocolate–based goods in Class 30 of the International (NICE) Classification of Goods and Services. Nestlé opposed the application with the Hearing Officer finding that Cadbury was only entitled to register the mark in respect of goods for which there was evidence of acquired distinctiveness, namely chocolate in bar and tablet form; eating chocolate; drinking chocolate; preparations for making drinking chocolate.

Nestlé appealed against the decision of the Hearing Officer, submitting that the color purple did not constitute a sign and nor was it capable of graphical representation and therefore, was not registrable under Article 2 of the Directive. Article 2 contains 3 conditions: (1) it must be a sign, (2) that sign must be capable of being represented graphically, and (3) the sign must be capable of distinguishing the goods and services of one undertaking from those of other undertakings.

In October 2012, Judge Birss QC (as he then was) held that Cadbury was entitled to register the color purple as a trade mark in respect of its milk chocolate confectionary, although this could not extend to other types of chocolate or goods. Nestlé appealed to the Court of Appeal on the basis that the judge had made errors in relation to the requirements that a trade mark be "a sign" and that it be "graphically represented", submitting that the mark applied for by Cadbury in this case did not fulfil those initial criteria.

Court of Appeal's decision – key points

• Nestlé's appeal is allowed and the trial Judge's decision allowing the registration of Cadbury's trade mark for the color purple is overturned.
• The Hearing Officer and the trial Judge had erred in principle and had misinterpreted the verbal description of the graphic representation of the mark for which application was made.
• The use of the word “predominant” in the description opened the door to a multitude of different visual forms as a result of its implied reference to other colors not described in the application. The Libertel case (as heavily relied upon by the trial judge) was distinguished as Cadbury's application covered the registration of a shade of color “plus” other material, not of just of an unchanging application of a single color, as in Libertel.
• The Court of Appeal found that the description, properly interpreted, does not constitute “a sign” that is “graphically represented” within Article 2. If the color as claimed is only “predominant”, the application would cover other matter in combination with the color, which is not graphically represented or verbally described in the precise manner required. In effect, this approach would allow the registration of multiple signs with different permutations, which are neither graphically represented nor described with any certainty or precision.
• To allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. Further, it would also "offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage".
• The Court of Appeal declined to make a reference to the CJEU on this point (which had been argued by Cadbury's Counsel), finding that the interpretation of Article 2 had already been expounded in sufficient clarity and detail to enable the Court to decide the appeal without troubling the CJEU.

Mattel v. Zynga background

This case involved a challenge to the validity of Mattel's "Tile" trade mark which had been registered in association with the board game SCRABBLE. The verbal description of the mark consisted of a 3-D ivory tile which showed a letter of the Roman alphabet on the top of the tile and a numeral in the range 1 to 10. The size and precise colour of the tile was not specified.

Justice Arnold granted Zynga summary judgment in November 2012, finding that the registration of the Tile mark was invalid as it did not comply with the first two requirements of Article 2 of the Directive. Essentially, it was not a sign capable of graphic representation due to the large variety of representations encompassed within it (namely the possible breadth of letter/number combinations). Justice Arnold found that the mark was an attempt to "claim a perpetual monopoly on all conceivable ivory-coloured tile shapes which bear any letter or number combination…".

Mattel's case on appeal was that the distinctiveness of the Tile mark should be taken into account in the overall assessment for the purposes of Article 2 and the proper place for this assessment was at trial (not in a summary judgment hearing). Justice Arnold did not agree that the distinctive character of the mark (which Mattel intended to prove at trial) had any bearing on whether the first two elements of Article 2 were satisfied.

Court of Appeal's decision – key points

• Mattel's appeal is dismissed and Justice Arnold was right to find that Mattel's mark was invalid as it did not satisfy the requirements of Article 2. It was not a sign capable of conveying some message; it was many signs.
• Justice Arnold's findings were re-iterated by the Court of Appeal, namely that the Tile Mark is not “a sign” as required under Article 2. The mark potentially covered many signs achievable by numerous permutations, presentations and combinations of the subject matter of the registration. Further, there is no graphic representation of a sign that meets the requirements of clarity, precision and objectivity.

Business impact

• Protection for specific colors, if distinctive of the brand owner's product or service, is still available, but applications will be scrutinised hard, to check that they are not overly broad or overreach the proper scope of protection.
• Brand owners should avoid use of the word "predominant" in trade mark applications for colors. In providing an assenting judgment in the Nestlé v Cadbury case, Sir Timothy Lloyd suggested that a better description may have been to describe the color as applied "to more than 50% of the visible surface area".
• A trade mark should not be seen to do the job of a patent by way of a potentially perpetual monopoly over a huge variety of different permutations, presentations and combinations. A sign will not be capable of graphic representation if it encompasses a large variety of different representations or combinations.
• Precision is vital in the drafting of trade mark applications and brand owners should ensure that the graphic representation for trade marks are clear and precise. If the application could cover different signs achievable by numerous permutations, presentations and combinations of the subject matter of the registration, the application or mark may fall foul of the requirements of Article 2.