TRADE MARKS HEARING OFFICER SHOWS HOW TO MAKE NO-ONE HAPPY

In the High Court’s Chancery Division this Tuesday, Mr Justice Lloyd affirmed in Mars UK Ltd v Société des Produits Nestlé SA (transcript not yet available) something that everyone except Nestlé already knew: you can’t make significant amendments to a trade mark midway through application proceedings. In this instance Nestlé had sought to register as a three dimensional mark the shape of the popular "Polo" mint, but without the word "Polo" on it. Mars filed an objection to the application on the grounds that (i) it was devoid of any distinctive character for the purposes of s.3(1)(b) of the Trade Marks Act 1994, and that (ii) it was in common usage and therefore not registrable under s.3(1)(d) either. The Hearing Officer ruled that the application should be amended so as to specify that the shape was (i) coloured white and (ii) of the same size as the "Polo" mint, including its distinctive hole in the middle. Mars appealed, objecting that the amendments allowed by the Hearing Officer were material changes to the mark applied for and accordingly permissible under neither s.13(1) and s.neither necessary or appropriate in order to define the distinctiveness of the mark it originally applied for. Lloyd J allowed Mars’ appeal but dismissed Nestlé’s. He pointed out that the power to amend a mark in mid-application is much narrower now than it used to be under the old Trade Marks Act 1938. He also ruled that the amendment allowed by the Hearing Officer significantly altered the mark applied for and was accordingly prohibited under s.39(2) of the 1994 Act.

The IPKat agrees with this ruling, which should warn trade mark applicants not to start out with applications to register sub-distinctive signs in the hope that the Hearing Officer will substitute what he believes to be the minimum level of distinctiveness and thus “complete” the application for the applicant.

More on Polos here, here
and here
Other ongoing trade mark litigation between Mars UK Ltd and Société des Produits Nestlé SA here