Trade Mark Protection: Court of Appeal says distinctiveness is not enough

The Court of Appeal for England and Wales recently handed down its much anticipated ruling in Cadbury's long-drawn-out battle to maintain its UK trade mark registration for the colour purple.

In Société Des Produits Nestlé S.A. v Cadbury UK Ltd [2013] EWCA Civ 1174 (referred to below as "the Cadbury case/judgment"), Lord Justices Lewison, Mummery and Lloyd allowed Nestlé's appeal from Mr. Justice Birss' decision in the High Court and held that Cadbury's description of the trade mark did not constitute a sign which was capable of being represented graphically.  That same day (further to an earlier case management direction by Lewison LJ), the same three Judges also heard the appeal in the Scrabble tile mark case in J.W. Spear & Son Ltd, Mattel Inc. and Mattel U.K. Ltd v Zynga Inc [2013] EWCA Civ 1175 (referred to below as "the Tile Mark case/judgment"). 

Both appeals concerned the interpretation of Article 2 of the Trade Marks Directive 2008/95 (the Directive).  The Cadbury appeal was heard first, and is described by the Court as the lead of the two judgments. 

The Law

Article 2 of the Directive (implemented by section 1 of the Trade Marks Act 1994) provides:

"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 form those of other undertakings."

At paragraph 15 of the Cadbury judgment, the Court of Appeal helpfully sets out the relevant points on the requirements of Article 2 which have emanated from the CJEU decisions on unconventional  or "exotic" trademarks (these points were cross referred to in the Tile Mark judgment) and can be summarised as:-

1. The Conditions: an application to register a trade mark must satisfy three conditions, namely (i) there must be a sign; (ii) it must be capable of graphical representation; and (iii) it must be capable of distinguishing the goods or services of one undertaking from those of other undertakings;
2. Purpose: to prevent abuse of trade mark law in order to obtain an unfair competitive advantage;
3. Identification requirements: clarity, intelligibility, specificity, precision, accessibility, uniformity, self-containment and objectivity;
4. Multitude of Forms: (3) above is not satisfied if the mark could take on a multitude of different appearances;
5. Colour without a message: a colour is capable of being registered as a trade mark if it is a sign and the message it conveys is about the source of the goods or services;
6. Colour as a sign conveying a message: colours or colour combinations designated in the abstract and without contours and used in relation to a product or service can convey a message;
7. Graphic representation of colour: precision and uniformity is required i.e. the colour or colour combinations must be arranged by associating them in a predetermined and uniform way;
8. Colour without form/in a multitude of forms: the mere juxtaposition of colours without shape or contours, or by reference to colours in every conceivable form (so that the consumer would not be able to recall or repeat with certainty the experience of a purchase) does not satisfy the requirements of Article 2.

Background

Cadbury

In 2004 Cadbury applied to trade mark the colour purple (specifically Pantone 2685C), with accompanying 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."

Despite a Nestlé opposition, Cadbury's application was accepted and published by the Registrar of Trade Marks with Cadbury having submitted evidence of distinctiveness acquired through use.  Nestlé did not contest the finding of acquired distinctiveness but appealed to the High Court on initial principles, namely that the mark described in the application was not "a sign" and was not capable of being represented graphically.  Mr. Justice Birss disagreed.  He concluded that single colours are capable of being signs, of being represented graphically and of distinguishing.  In particular, he agreed with the Hearing Officer's view that the use of the word "predominant" used in the description was not too vague. 

Tile Mark

The appeal in the Tile Mark case arises from a summary judgment of Mr. Justice Arnold where he declared the claimants registration for its Tile Mark (associated with the popular word game Scrabble) invalid.  According to the verbal description of the tile mark, it 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 of 1 to 10. 

The claimants argued on appeal that the High Court judge was wrong to decide summarily that the distinctiveness of the tile mark was irrelevant in determining whether the first two conditions of Article 2 are satisfied i.e. that distinctiveness should be taken into account in the overall assessment for the purposes of Article 2. 

Decision

Cadbury

The Court held that Cadbury's description (quoted above) when properly interpreted does not constitute "a sign" that is "graphically represented" as required by Article 2.  The use of the word "predominant" necessarily implies the possibility of other colours and/or other visual material (not displayed or verbally described in the application) being used in combination with the colour purple.  To allow such an application would mean that the trade mark potentially covers multiple signs (rather than one sign) with different permutations, presentations and appearances.  Such lack of certainty does not satisfy the requirements of Article 2.

Judge Mummery stated that "to allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty." He also said it would mean that Nestlé and other competitors would not be able to tell from inspecting the register the full scope and extent of the registration, thus giving Cadbury a competitive advantage which would offend against the principle of fairness.

Tile Mark

In the Tile Mark case the Court of Appeal held that Mr. Justice Arnold was correct in finding the mark invalid.  It was not "a sign" as required by Article 2 as it potentially covers many signs achievable by numerous permutations, presentations and combinations of the letters and numbers described in the registration.  There is, therefore, no graphic representation of a sign that meets the requirements of clarity, precision and objectivity.  Importantly, the Court confirmed that all three conditions of Article 2 had to be looked at sequentially and agreed that a "paella" approach, (as described by Zynga's QC) whereby all three requirements are looked at together was incorrect - Judge Mummery found such an approach unpalatable!

Comment

The outcome of the Cadbury appeal may have turned on quite a narrow point (namely the misinterpretation of the verbal description of the mark's graphic representation), however, it acts as a useful reminder to brand owners/trade mark agents seeking to register unconventional or "exotic" trademarks, such as colours, sounds and smells: proceed cautiously when crafting a description of your mark! A lack of specificity, clarity and precision could leave your application open to being rejected or your mark subsequently invalidated. "A sign" must be exactly that – one sign that conveys a message about the source of the goods or services in question.
Furthermore, these cases make it clear that if you fall short of the required precision in describing your mark, proof of acquired distinctiveness is not going to save you.
So, what next for Cadbury?  In submissions before the Court of Appeal, its counsel certainly hinted at the possibility of a further appeal requiring a reference to the CJEU (although it would of course be necessary for Cadbury to be given leave to do so).  Given the importance of this issue for Cadbury, we suspect that it this may not be the end of the matter and it may well have the appetite to battle on.