Of Purple Haze and Scrabble Plays: appeal court says "no" to fuzzy trade mark descriptions

Before anyone else emails the IPKat to let him know, he can tell you that he is fully aware of the two big trade mark rulings from the Court of Appeal for England and Wales last Friday in Société Des Produits Nestlé S.A. v Cadbury UK Ltd [2013] EWCA Civ 1174 and JW Spear & Son Ltd, Mattel Inc and Mattel UK Ltd v Zynga Inc [2013] EWCA Civ 1175 and he will be providing separate Katposts on them in the fullness of time.  Meanwhile he is delighted to offer you the following note from Katfriend and jolly useful person Roland Mallinson (Taylor Wessing).  Writes Roland:

In two separate judgments but conjoined appeals, the Court of Appeal reversed previous decisions to cancel Cadbury's UK registration for the colour purple [critically reviewed by the AmeriKat here] and upheld the cancellation of Mattel's UK registration for a Scrabble tile [warmly welcomed by guest Kat Kate here].  The connection lies in the interpretation of Article 2 of TradeMarks Directive 2008/95. 

Until now, Cadbury had successfully persuaded the United Kingdom Intellectual Property Office (UKIPO) and the High Court that its application satisfied the Court of Justice of the European Union's well-established criteria in Case C-273/00 Sieckmann of what amounts to a sign capable of graphical representation so as to be registrable.  These are that the representation of the sign must have the required clarity, precision, self-containment, durability and objectivity for both the registrar and competitors to know what is covered.  Cadbury's application showed a particular purple colour on the form (which looks more like blue: see illustration, left, and the online register here), identified it using the Pantone colour code 2685C and, critically in this case, included a description that the colour is 

"applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods" [Roland's emphasis]. 

Nestlé argued that the underlined words were unclear and conjured up potentially multiple signs, not just one.  The High Court had concluded, however, that they introduced no more vagueness and uncertainty than was already present in similar such registrations (of which there are a number, not least because it is a form specifically included within the UKIPO's own guidelines). The analogy (argued in the Scrabble tile case) was that even plain word marks necessarily share such vagueness. This is because they extend to cover the word in a multitude of fonts and colours.  The Court of Appeal rejected this, holding that such wording could cover multiple signs with different permutations, presentations and appearances. This arose from implied references to other colours and other visual material, none of which are shown nor described with any certainty or precision on the application form, and yet where the colour purple predominates.  This lack of certainty meant it was not one sign but many, and so it fell foul of Article 2. 

To some extent, this decision amounts to a cancellation on a technicality, but one that looks set to lose Cadbury its 2004 priority date. It leaves open the option for Cadbury to re-file with a different description. To do so and to rely on the same evidence of acquired distinctiveness as used in this application means that its sign, as subsequently represented and described, needs to align with the sign as used in that evidence.  A challenge to the latter was not part of Nestlé's appeal on this occasion.  The Court of Appeal even mooted alternative wording: "as applied to all or to more than 50% of the whole visible surface." In that case, it hinted that the outcome might have been different.  However, even then, it arguably conjures up myriad colour combinations and arrangements.  The better formula would seem to be (where appropriate) to confine any application for a single colour to use on the whole of the article or packaging, with no variant.  The presence of some other colours on the packaging when actually used on the market, e.g. in printed words and other branding, could be argued not to expose the single colour mark registration to future revocation for non-use. This means invoking Article 10(1)(a) of the Trade Mark Directive, which applies so long as the words and other colours do not "alter the distinctive character" of the predominant colour that is the subject of protection. 

Mattel's Scrabble tile registration suffered a similar fate but without the benefit of any judicial alternative suggestions.  It was registered with images of a blank ivory-coloured Scrabble tile (shown on the right) combined with the description "on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10".  No examples were given of how this might look.  The applicant for cancellation, Zynga, suggested four permutations (below) that highlighted the multitude of options this could cover, including some that would evidently overlap with third party rights or would be non-distinctive. 

The Court of Appeal agreed that this was not one single sign, nor one that was identified clearly, precisely and objectively enough.  Mattel tried to run an additional argument that the question of whether the description satisfied Article 2 should be answered as part of an overall assessment, in particular taking into account (among other things) evidence that the mark as depicted is in fact distinctive as a result of extensive use. It argued that this meant summary judgment should not have been awarded against them (as it had).  The Court rejected this. The Article 2 test is objective and it is for the registry or court to assess, on its face, whether the application is for "a sign" that has been represented graphically in accordance with the Sieckmann criteria. 

The consequences of these decisions, if they stand, are that applicants should take even greater care in the wording of the text box "Mark Description/ Limitation" on a UK application form (and its equivalent for CTMs). As we already know from Case C-307/10 Chartered Institute of Patent Attorneys (the IP Translator case), they should also beware blindly following registry guidelines.  Cadbury had tried to downplay the wording, referring to it merely as "textual description." It argued that there is no obligation arising from the case law for the uses made, or proposed to be made, of the colour to be incorporated into the graphical representation in the application form.  While that may be so, once you include wording within the description, it is clear that it will be treated as defining the scope of the mark as graphically represented.

Certainly for colour marks, the consequences are not confined to new applications. However, it is clear that any existing colour mark registration that uses the "predominant" wording would still need to be considered separately on its merits.  

Purple Haze here
Deep Purple here
A Night on the Tiles here