Cheddar luck next time for Babybel

Fromageries Bel SA (“FBSA”) was the proprietor of a UK registered trade mark (UK 2060882) (the “Mark”) for the sign shown below and registered for “cheese” in class 29:

The Mark was identified to be a three-dimensional mark and had the following description: “The mark is limited to the colour red. The mark consists of a three dimensional shape and is limited to the dimensions shown above”.

J Sainsbury plc sought to invalidate the Mark on the basis that it did not satisfy the requirements of section 1(1) of the Trade Marks Act 1994 (the “Act”) and that it fell foul of the shape specific exclusions in section 3(2) of the Act.

At first instance, the Hearing Officer (“HO”) from the UK Intellectual Property Office held that, while the Mark did not fall within the exclusions in section 3(2), it was liable to be invalidated under section 3(1)(a) of the Act because the reference to “the colour red” in the description lacked sufficient clarity and precision. It therefore did not satisfy the Sieckmann criteria (from Case C-273/00) which required any sign to be represented in a manner that is “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

The HO further drew on the guidance from Libertel (Case C-104/01) which stated that, in the context of an application for a colour per se, a mere description of colour in words was not sufficiently clear and precise and, instead, the practice of using internationally recognised colour identification codes had become the usual way of representing such marks.

Having held that the colour of the Mark was an ‘essential characteristic’ of the mark in his assessment of the section 3(2) test, the HO concluded that the Libertel requirements should apply to every trade mark in which colour is an ‘essential characteristic’.

The HO held that the pictorial element of the mark could not be relied upon to limit the meaning conveyed by the description because “the pictorial representation of the colours on the register is only as accurate as the process used to capture the colours when they were scanned from the application into the electronic register”.

FBSA appealed the HO’s decision to the High Court on the ground that the Hearing Officer had erred in applying the Sieckmann criteria. FBSA argued that while it was necessary to be precise about the hue where a mark is a colour per se mark, it is not necessary for other marks that incorporate colour. It argued that to conclude otherwise would mean that there were huge numbers of marks on the register featuring colours (but without specific Pantone references) that would become vulnerable to invalidity.

His Honour Judge Hacon (“the Judge”) stated that the HO had erred by tying the issue in hand (namely whether the hue of a colour featured in a mark must be defined precisely) to the essential characteristics of the sign for the purposes of section 3(2) of the Act. Such an approach was “[neither] necessary or helpful”. Instead, the assessment should be looked at by reference to section 1(1) of the Act and, in particular, by determining what is necessary in order to ensure that a mark is capable of distinguishing the goods or services of one undertaking from those of other undertakings.

For a colour per se, a colour identification code is necessary, not only in order to satisfy the Sieckmann criteria but also because an imprecisely defined colour is not capable of distinguishing.

For other marks which contain colour, the assessment of whether a mark is capable of distinguishing will be based on the entire mark (including both colour and non-colour elements). It is possible that the mark may be capable of distinguishing even if the colour is only described as “blue” or “red”, but, for some marks, they will only be capable of distinguishing if the colour is described as being a particular hue. That is a question of fact in each case depending on “the extent to which the colour of the relevant feature of the mark contributes to making the mark capable of distinguishing and whether it is likely that only a particular hue will confer on the mark that capacity to distinguish”.

The Judge reviewed the evidence and concluded that the Mark was only capable of distinguishing FBSA’s goods if a particular hue of red was specified. While the approach adopted by the HO may have been incorrect, the conclusion that the Mark was invalid was therefore correct.

The Judge further agreed with the HO that the pictorial representation in the Mark could not be used to limit the description of “the colour red”. Interestingly, the decision might have been different if the Mark has been filed with no description or if it had stated “the colour red as shown in the representation” but in the present case, the description and the pictorial representation were inconsistent.

The appeal was therefore dismissed.

In line with other recent UK decisions (e.g. Glaxo Wellcome UK Ltd v Sandoz Ltd), this case clearly illustrates the need to exercise caution when seeking to incorporate colour into a mark by means of any text description.

The full judgment can be found here.