Cadbury faced another trade mark set back last week before the Court of Appeal ([2018] EWCA Civ 2715).
Background
Cadbury filed a trade mark application in 1995 covering a range of goods in Classes 29 and 30 ("Mark 1"). Mark 1 was filed with a sample of the colour purple (Pantone 2685C) and a description which originally read "the mark consists of the colour purple". The application form did not specify that the application was for a series mark.
During the examination procedure, at the request of the examiner, the goods were limited to "chocolate in bar or tablet form" in Class 30 and the description was amended to "The mark consists of 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".
Cadbury filed another application in 2004 for the same sample of the colour purple (Pantone 2685C) but covering "chocolate in bar and tablet form, chocolate confectionery, chocolate assortments, cocoa-based beverages, preparations for cocoa-based beverages, chocolate-based beverages, preparations for chocolate-based beverages, chocolate cakes" in Class 30 ("Mark 2").
Mark 2 was successfully opposed by Nestlé on the basis that it did not constitute a sign that was graphically represented with sufficient certainty or precision. (This dispute went as far as the Court of Appeal in 2013: see our blog here.)
The successful opposition against Mark 2 meant that Mark 1 was potentially vulnerable to invalidation because it was identical to and used the same description as Mark 2. Cadbury requested the deletion of the words "predominant colour" from the description of Mark 1. The UKIPO's hearing officer refused this request on the basis that alterations to registered trade marks are prohibited, except in very limited circumstances. The hearing officer's decision was confirmed by the High Court (for details see our blog here).
The appeal
Cadbury appealed on the basis that Mark 1 was not a single mark but, rather, a series mark. A series mark is defined by the Trade Marks Act 1994 ("TMA") as "a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark". Cadbury argued Mark 1 actually consisted of:
- a mark covering the colour purple (Pantone 2685C) applied to the whole visible surface of the packaging of the goods; and
- the colour purple (Pantone 2685C) being the predominant colour applied to the whole visible surface of the packing of the goods.
Under the Trade Mark Rules 2008, it is possible for a trade mark owner to request the deletion of a mark in a series registration. On this basis, Cadbury requested the deletion of the second mark in the "series".
The ruling
The Court of Appeal noted that that the description of Mark 1 on the register begins “The mark consists of the colour purple…”. It noted that this suggests that Mark 1 "purports to define one mark".
Cadbury was found to have placed too much weight on the use of the word “or” in the description. Lord Justice Floyd said, "Beguilingly though it was put, I cannot accept Cadbury’s argument that there are two marks. Once one starts to parse the description on the basis that every alternative gives rise to a different mark, one is faced with the fact that the predominant colour wording itself covers what Sir John Mummery, in Cadbury 1, called a “multitude” or “unknown number” of different signs. The logical result of Cadbury’s argument is, as it seems to me, that the registrar has allowed registration not of a series consisting of two marks but a series consisting of an unknown number of marks. Rather than reach such a conclusion, the informed reader of the registration would, I have no doubt, conclude that the various alternatives covered by the description were not intended to identify separate marks, but were parts of a generalised but imprecise description of a single mark".
Comment
This decision will provide worrying, but probably not unexpected, news for Cadbury because it leaves Mark 1 vulnerable to invalidation.
It is interesting to note that the description which ultimately proved problematic for Cadbury was originally suggested by the UKIPO itself during the application process. It is also interesting that the court, in essence, found that the UKIPO had incorrectly accepted Mark 1 when it was filed. Trade mark owners should therefore be cautious when answering office actions and consider the possible long-term consequences of any changes that they make to their application.
Thought should also be given to the wording in the TMA which currently states that trade marks must be a "sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings". This provision is soon to be amended when the UK implements the Trade Marks Directive in January 2019 (see our blog on the reforms here) However, although there will no longer be a requirement for graphical representation, trade marks will still need to be clearly and precisely defined.