A HOLE LOT OF FUSS ABOUT A POLO

This from the BAILII website: in Société des Produits Nestlé SA v Mars UK Ltd [2004] EWCA Civ 1008, Nestlé, who manufactured POLO mints, applied to register as a trade mark in Class 30 in respect of ‘sugar confectionery’ a sign which was graphically represented in a black and white photograph of a three-dimensional shape, which was the familiar shape of a Polo mint, but with the word ‘Polo’ embossed on it. No particular colour or size was claimed in the application. Mars opposed this application on the grounds that the sign was devoid of distinctive character and was used by other traders in the UK.

The hearing officer rejected the objection and held that, so long as (i) the specification was limited to ‘mint flavoured compressed confectionery’; (ii) the sign was limited to the colour white and (iii) the sign was limited in size to that of the standard Polo mint, the sign had acquired a distinctive character through use in the UK. Finding that the application for registration could only proceed subject to those three requirements, he invited Nestlé to amend its application accordingly. Both Nestlé and Mars appealed: Mars argued that the Registrar had no power to permit Nestlé to amend its application at all. Mr Justice Lloyd agreed, whereupon Nestlé appealed.

The Court of Appeal dismissed Nestlé's appeal. First, it held that a requirement that the elements of colour and size should be included in the mark in order to make it distinctive and therefore registrable did not fall within the provisions in s.13(1) of the Trade Marks Act 1994 that the applicant

"might agree that the rights conferred by the registration shall be subject to a specified … limitation".

The required inclusion of the colour and size elements was not a specified limitation on "the rights conferred by the registration" of the mark identified in the application. Nor did the requirements of colour and size limit ‘the rights’ which could have been acquired on registration without including them. The requirements related to the inclusion of essential ingredients in the content of the mark in order to make it distinctive, thus satisfying the requirements for registration of the mark and thereby obtaining the rights conferred by it. Secondly the restriction of the application to ‘mint flavoured compressed confectionery’ was a permissible restriction of goods, but the requirements as to colour and size of the mark were not. The requirements of colour and size did not restrict ‘the goods’ covered by the application for registration of the mark. The requirements restricted the mark itself to that which distinguished the goods covered by the application from the goods of other traders.

The IPKat heartily concurs with the Court of Appeal's decision. The extent to which a trade mark applicant is invited to amend his application in midstream is the extent to which actual or potential opponents can be wrong-footed.

Nestlé boycott here
How POLO uses online marketing here
Briffa's comment on Lloyd J's decision here
More on Mars here and here