Who: Société des Produits Nestlé SA (“Nestlé”); Cadbury UK Ltd (“Cadbury”); JW Spear and Sons Ltd and others (“Mattel”); Zynga Inc (“Zynga”)
When: 4 October 2013
Where: Court of Appeal of England and Wales
Law stated as at: 31 October 2013
Two cases involving non-conventional trade marks have recently been heard by the Court of Appeal as co-joined appeals given the similarity of their subject matter.
Background to the cases
In 2004, Cadbury applied to register a specific shade of purple, which it uses in relation to many of its products, as a trade mark at the UK Intellectual Property Office (“IPO”). The application described the mark as follows:
“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”.
Although Nestlé launched opposition proceedings under various grounds, including lack of distinctiveness, the IPO allowed Cadbury’s application. Upon appeal at the High Court, Nestlé’s main argument was that the mark was not a “sign” capable of being represented graphically and, as such, fell foul of Articles 2 of the EU Trade Marks Directive (2008/95/EC) (the “Directive”).
On appeal, the High Court judge disagreed and confirmed that although the description of the mark required a decision to be made as to whether the colour was the “predominant” colour used on the visible surface of the packaging of a product, the description was not too vague.
Nestlé appealed to the Court of Appeal, arguing that the High Court judge had made an error in determining the mark to be “a sign” that can be “graphically represented”.
By contrast, Mattel already had registered trade mark rights in relation to the shape of a Scrabble playing tile for board games and computer game adaptations of board games. The description of the mark on the relevant registration was as follows:
“a three dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a number in the range of 1 to 10″.
In March 2012, Mattel brought proceedings against Zynga for alleged infringement of its various SCRABBLE and SCRAMBLE Community trade marks, including the playing tile mark, in Zynga’s ‘Scramble with Friends’ mobile app game. Unfortunately for Mattel, in November 2012 the High Court gave summary judgment in favour of Zynga declaring that, given the infinite number of permutations of the scrabble playing tile mark, it was not a “sign” and nor was it capable of clear and precise graphical representation so as to allow competitors to determine the scope of the protection.
Mattel appealed to the Court of Appeal. Given that the two cases were based on the same issues of what can constitute a sign and the scope of graphical representation, permission was given for the appeals to be listed for the same hearing in front of the same panel.
Cadbury left purple-faced following Court of Appeal’s Decision
Giving the leading judgement Sir John Mummery first considered the ECJ’s decisions on what he regarded as “exotic” trade mark applications in line with the situations in question and drew a number of principles.
Firstly, he established that colours, or combinations of colours, designated in the abstract, are capable of being a “sign”. However, where there are two or more colours, the mark must meet the criteria of precision and uniformity, and as such the colours must be arranged in an exact, predetermined way in order to be considered a “graphical representation”. In this respect, a mark for colours mixed in an unspecific way without shape or contour, or with reference to every conceivable form or combination of colours, should not be permitted as consumers of the product would not be able to recall or repeat with certainty the experience of the purchase of goods packaged in such a way.
Ultimately, there is a requirement of certainty so that the authorities and competitors can know exactly which combination of colours will likely infringe the mark and which will not. Permitting a mark which covers infinite permutations of colour combinations would provide the proprietor with an unfair competitive advantage.
Applying this to the Cadbury and Nestlé dispute, the Court of Appeal judge considered a key element of whether Cadbury’s trade mark application contravened the ECJ case law he had cited by referring to the colour purple not only as applied to the whole visible surface of the packaging, but also as “being the predominant colour applied to the whole visible surface” of the packaging. The word “predominant” implied reference to other colours and visual representations which were not specifically set out in the application. This, in theory, could open the door to an infinite number of visual combinations in which purple would be the predominant colour. If the registration were to be allowed, the result would be to permit a multitude of different “signs” which lacked graphic representation and would not be described with any clarity or certainty.
Relating this to the requirements of the Directive, the sheer unknown number of combinations of signs as a result of the description of the mark meant that Sir John Mummery deemed the mark not to satisfy the requirement for a “sign” within the meaning of Article 2.
Furthermore, the lack of certainty due to the various possible permutations meant that such signs were not capable of being represented graphically. Consequently, the application was not precise enough and its scope could not be objectively judged and as such, it did not qualify for registration.
As an aside, it is worth pointing out that another of the Court of Appeal judges agreed with Sir John Mummery but suggested that sufficient certainty might have been accomplished by using wording to explain the level of the predominance of the purple colour, such as “applied to 50% of the area of the visible surface”. This highlights that uncertainty as to the mark actually registered was the main issue.
Court of Appeal has the final word in favour of Zynga
With regard to the Mattel and Zynga dispute, Sir John Mummery considered the issues to be identical and therefore that the ECJ decisions should be interpreted in the same manner. Consequently, he agreed with the High Court’s assessment that the scrabble tile mark was not a “sign” under Article 2 of the Directive as it had the propensity to cover many signs, each with a different presentation or combination of letters and numbers on display. As such, the registration failed to provide a graphic representation of a sign which met the requirements of clarity, precision and objectivity.
Why this matters:
Marketers need to be particularly cautious when attempting to register or enforce a trade mark which is more abstract than a conventional mark, even if it is an important element of their brand. Although it remains the case that something abstract, such as a colour, may be registered, the key is that there needs to be certainty as to the scope of the mark and the permutations which it could cover. The drafting of the application is very important and anything which opens the door to a multitude of visual variations in form is likely not to meet the requirements of being capable of graphical representation and sufficiently clear and precise. Indeed, if Cadbury had merely applied to register the particular shade of purple alone, without reference to it being the “predominant” colour, the chocolate manufacturer may well have succeeded in its application.
The Mattel and Zynga case over the scrabble tiles also goes to show that even if such a trade mark progresses beyond the application stage to become fully registered, it may still offer no protection if it is subsequently viewed to fall outside the scope of a sign capable of graphic representation due to lack of certainty as to the visual properties of the mark.
The end of the “graphical representation” requirement may be on its way
It is worth noting that there are proposed amendments to the Directive and Community trade mark Regulations in the pipeline which will remove the express requirement that trade marks be capable of graphical representation.
These may be implemented as soon as early 2014. In their current form, the amendments replace the requirement of graphical representation in favour of a requirement that the mark must be capable of “being represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor”.
This is likely to make it a little easier to register abstract marks such as those considered in these two cases. However, the requirement that the competent authorities and public must be able to determine the “precise subject” of the mark means that the Court of Appeal’s reasoning in these cases is unlikely to be affected by the proposed changes to the Directive and Regulations. As a result, applications to protect a mark (or attempts to enforce a mark) which may have countless permutations will almost certainly encounter the same difficulties experienced by Cadbury and Mattel.