No sign of Success: CoA holds Mondelēz and Mattel's marks fail Sieckmann criteria

The colour purple

In 2004 Cadbury (which was taken over by Kraft Foods in 2009 and is now a subsidiary of US based global conglomerate Mondelēz International) applied to register a trade mark for the colour purple, identified by using the Pantone colour code 2685C, and included a description which specified that the colour is “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods” [emphasis added]. The application was opposed by Nestlé. At first instance, the Registry accepted Cadbury’s trade mark application, which was later confirmed on appeal to the High Court.

Nestlé appealed to the Court of Appeal. Nestlé’s principal argument focused on the use of the word “predominant” in the trade mark description. Nestlé argued that the use of this word introduced an element of vagueness and subjectivity into the description of the mark and therefore did not satisfy the requirements of precision, clarity and objectivity that all marks must satisfy in order to be registrable. The lack of definition provided for the word “predominant” caused difficulty for both the Registrar’s examiner on deciding whether to register the mark, and for third parties for assessing the scope of the mark, and whether certain actions might infringe the mark. The meaning of the word was not precise and therefore it was impossible to decide with any certainty whether the use of the colour purple is “predominant” on certain products.

Cadbury primarily relied on the ruling in Libertel Groep BV v. Benelux-Merkenbureau Case C-104/01 [2003] ECR 1-3793“any more vagueness and uncertainty than is already present and acceptable in trade mark registrations of this kind” to argue that the verbal description complied with case law, showcasing various other trade marks currently registered with descriptions containing the word “predominant” and referring the Court to the UK IPO guidance which indicates that use of the word “predominant” is acceptable in relation to descriptions of marks as applied to the visible surface of named objects, such as packaging for goods. The High Court had concluded that the word “predominant” did not introduce .

Decision

The Court of Appeal rejected Cadbury’s arguments and distinguished Libertel“specific, certain, self-contained and precise manner required”“multiple signs with different permutations, presentations and appearances” on the basis that Cadbury’s application was for the registration of the colour purple plus other material, as opposed to a single colour. The description contained in the application did not refer only to the colour purple as applied to the visible surface of the packaging of the goods; using the word “predominant” implied a reference to other colours and other visual material (i.e. other “signs” which were not described or depicted on the form) over which the colour purple might predominate. The “sign” was not described in the and to accept the application would be to register which were not depicted or represented with any certainty or precision, contrary to the Article 2 requirements. Both the Registrar and competitors would therefore have difficulty in deciphering the appearance and number of these multiple signs, providing Cadbury with a competitive advantage.

Sir John Mummery held that Nestlé’s appeal should be allowed and Lewison LJ and Sir Timothy Lloyd agreed, with the latter adding that for a colour mark to qualify for registration, it must first be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”Sieckmannobiter (the criteria) even if it has acquired distinctive character. Authorities and competitors must be able to distinguish both marks which fall within the scope of registration and those which do not. However, he noted that even if these tests are satisfied, registration is not a foregone conclusion but rather a possibility. In , he also provides a potential alternative to the use of the word “predominant” by suggesting that spelling out a percentage of surface area which must be covered by the colour mark could potentially achieve certainty.

Mattel’s tile mark

Mattel did not fare any better in its appeal from the summary judgment granted by Arnold J, in which Mattel’s trade mark was declared invalid for failing to comply with Article 2 of the Trade Mark Directive. Mattel’s trade mark (the “tile mark“on the top surface of which is shown a letter of the Roman alphabet and a numeral in range 1 to 10.””) consisted of a three-dimensional ivory-coloured tile depicted in the registration (reproduced below), together with the description (i.e. a tile used for the game “Scrabble”).

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In this case, the debate centred on whether the feature described above was simply a property of the subject matter rather than “a sign” capable of registration pursuant to Article 2. Mattel argued that the distinctiveness of the tile mark should have been taken into account in Arnold J’s assessment as to whether the requirements of Article 2 had been satisfied, and that this should be have been done at trial (which never took place). Zynga, the defendant in the original infringement claim brought by Mattel in connection with the game “Scramble with Friends”, objected to the tile mark on the grounds that it was neither “a sign” nor capable of graphic representation as various permutations were encompassed by it. Zynga argued that this would provide Mattel with a monopoly over a huge variety of variations and combinations which could be classed as the tile mark.

Mattel submitted that the requirements of Article 2 are interrelated elements and cannot be viewed in a vacuum. To determine whether the registration is for “a sign” capable of being represented graphically, you must first know its distinctive character. It was also argued that if a mark can be represented in a variety of different forms, this does not lead to the conclusion that it must be uncertain; instead, Mattel suggested that if the public can recognise the various permutations as the “tile mark”, then this provides sufficient certainty and precision for the mark to be “a sign”. Zynga contested this by providing four examples of what the description would encompass, including tiles with, for example, ‘10p’ or ‘F1’ written on the top and arguing that distinctive character was an irrelevant consideration when assessing the first two requirements in Article 2.

Decision

The Court of Appeal unanimously dismissed Mattel’s appeal, stating that first, the tile mark was not “a sign” as required under Article 2 as it covers not one, but many signs which can be achieved by various permutations, presentations and combinations of the subject matter of the registration and secondly, that the graphic representation was not sufficiently clear, precise or objective to satisfy the second condition in Article 2 of the Trade Mark Directive. The idea that distinctive character must first be assessed was also rejected.

Comment

These two decisions highlight, once more, the importance of the Sieckmann criteria. The courts are keen to restrict the registration of marks that lack precision or clarity. To do otherwise means that the mark can cover a multitude of different versions or permutations and that, hence, the scope of the proprietor’s monopoly is unclear. Applicants must therefore exercise caution when drafting their trade mark application to ensure that the “mark description” provides certainty.

The Cadbury decision provides further guidance on the LibertelLibertelper seLibertelSieckmann decision. The decision is often put forward as a demonstration of the fact that colours are registrable . The Court of Appeal was keen to emphasise that means that a colour is not registrable unless the criteria are satisfied but it does not mean that if the criteria are satisfied then the mark will be registered.

Registrants seeking to register colour or shape marks would be strongly advised to seek advice before filing their applications.

For the full text of the decisions, please click here and here.