The Court of Appeal has recently handed down judgements in Société des Produits Nestlé SA v Cadbury UK Limited and JW Spear & Sons Limited, Mattel Inc & Mattel UK Limited v Zynga Inc, which emphasise the importance of complying with the conditions of Article 2 of the Trade Marks Directive 2008/95/EC as being a “sign” capable of graphic representation.
Nestlé v Cadbury
Nestlé appealed to the Court of Appeal following the registration of a trade mark by Cadbury's, which was described as “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 the goods”. The Court allowed the appeal and overturned the High Court decision which had found the mark capable of registration for certain milk chocolate products for which it had acquired distinctiveness.
As the description referred not only to the colour purple, but also the “predominate colour”, the Court found that there was an unknown number of signs in the description and therefore the description did not constitute a sign that was graphically represented. The Court also found that the mark applied for lacked clarity and precision and was therefore too uncertain to be registered. Furthermore, the Court said that it would “offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage”.
It remains to be seen whether Cadbury will seek leave to appeal to the Supreme Court.
Spear & Mattel v Zynga
Mattel's claim against Zynga was for the infringement of the mark in connection with the exploitation of a digital game, SCRAMBLE WITH FRIENDS. Zynga challenged the validity of Mattel's tile trade mark, that consisted of a 3D ivory tile which showed a letter and a number ranging from 1 to 10, which had been registered in association with the word game SCRABBLE.
Zynga applied for summary judgement, which was successful. The registration of the tile was invalid as it was not a sign capable of graphic representation because the letters could be arranged in a number of ways and, similarly to the Cadbury's case, there was a lack of clarity and precision. Mattel appealed the decision.
The Court of Appeal dismissed Mattel's appeal.
Key points to take away from this, include:
- Colours can be registered as trade marks if they are distinctive of the goods or services of a brand, but registration will be scrutinised by the courts and should not be overly broad.
- Avoid any uncertainty, for example by avoiding using words such as “predominately”. Specific quantities/percentages might be used instead.
- For certainty and precision, trade mark applications should not have the potential to monopolise a number of different versions of the sign.