This decision highlights the requirement for increased clarity and precision when registering a non-traditional trade mark. In particular, it highlights the importance of including a Pantone descriptor where a colour is incorporated into a 3D trade mark (where it is an essential characteristic of the mark).
Background
Fromageries Bel SA (“FBSA”) registered the mini Babybel cheese wrapper mark on 29 August 1997. The pictorial representation of the mark shows a puck-shape which is on its side, made from red wax, with pull tags in fuchsia fading to white. The description is as follows: “The mark is limited to the colour red. The mark consists of a three dimensional shape and is limited to the dimensions shown above [4cm diameter x 2cm height].”
Sainsbury’s applied to invalidate the trade mark on the grounds that, amongst others, the colour ‘red’ in the description did not provide sufficient clarity and precision. It stated that a particular hue of red should have been specified. Sainsbury’s was successful on this (single) ground and the mark was declared invalid. FBSA appealed that decision.
The appeal
FBSA appealed to the High Court on the grounds that: i) there was no requirement for the mark to specify a hue because the mark had more characteristics than just the red colour (see further below); ii) the mark should be limited to the colour which was shown in the pictorial representation; and iii) this ground was not a ground at all but an application by FBSA to limit the rights conferred by the trade mark going forwards to the specific hue of Pantone No 193C.
The outcome
- The broad description of the colour ‘red’ was not sufficiently clear or precise, even where the court found that there were other essential characteristics of the mark (i.e. the shape and the pull tags were also considered essential characteristics).
- The description of a mark must clarify the subject matter and scope of the protection sought and not introduce uncertainty when compared with the pictorial representation.
- FBSA’s attempt to limit the trade mark rights to the Pantone 193C hue was rejected on the basis that such an application, if successful, would introduce an additional feature to the mark in order to make it distinctive, as opposed to narrowing the scope of any possible acts of infringement.
Commentary
Given the outcome of this case, it is important to consider whether it is necessary to refer to specific Pantone codes in the description of new 3D marks incorporating colour. Further, to ensure that there is not any discrepancy with the description of the mark and any pictorial representation. It is also important to check that existing registrations are compliant and consider what steps can be taken to reduce the risk of invalidity challenges.
The decision serves as a reminder of the difficulties brand owners can face when seeking to protect non-traditional trade marks.
How can Burges Salmon help?
If you would like to discuss any of the issues raised in this article or would like any further information, please contact Jeremy Dickerson, Emily Roberts or your usual intellectual property team contact.
A link to the judgment can be found here.