English High Court dismisses Babybel appeal on the 3D red wax-coating UK trade mark

Earlier this month, His Honor Judge Hacon (sitting as a Deputy High Court Judge) issued his ruling in Fromageries Bel SA v J Sainsbury Plc [2019] EWHC 3454 (Ch), confirming the 'Babybel cheese' 3D trade mark could not survive an application for a declaration of invalidity. 

Background

Fromageries Bel SA (‘FBSA’) is the owner of the UK trade mark registration No 2060882 in class 29 in relation to cheese. Below is the graphical representation and description of the trade marks as found on the UKIPO Trade Marks Registry: 

'The mark is limited to the colour red. The mark consists of a three dimensional shape and is limited to the dimensions shown above.'

Unfortunately, following a successful invalidation application filed by J Sainsbury PLC ("Sainsbury’s") in October 2017, the said 3D trade mark was found to have been invalidly registered. The registration was thus cancelled by the UKIPO’s Decision O/086/19 ('the Decision'). This finding was then appealed by FBSA to the High Court of Justice.

UKIPO’s Decision 

Sainsbury’s claimed that, mainly, the red 3D trade mark should be declared invalid pursuant to s.47(1) of the Trade Marks Act 1994 (‘the 1994 Act’), on the grounds that, ultimately, the mark did not satisfy either s.3(1)(a) or s.3(2) of the 1994 Act.

[1] The essential characteristics of the contested mark

Whilst FBSA submitted that, the 'shape, protrusions, dimensions, and the colour red' were all essential characteristics of the contested mark, Sainsbury’s merely agreed on the 'puck-like shape and protrusions making up the pull tag' on that point, as they believed that the dimensions were 'unclear and, in any event, incapable of turning the mark into anything other than a shape mark', and the colour red was just 'an incidental element'.

After hearing submissions from counsel of both sides, Hearing Officer Allan James concluded that:

I find that the essential characteristics of the contested trade mark are the shape of the goods in the dimensions indicated in the representation of the mark, the protrusions making up the pull tag, and the colour red. [para 40]

The fact that the colour red would be one of the several essential characteristics does matter, because (1) since the shape was not considered as the sole essential characteristic of the mark, it fundamentally defeated the invalidation grounds under s. 3(2)(a), (b) and (c) of the 1994 Act on the shape specific exclusions; and (2) it defined the sign at issue as not a 'colour per se' mark.

[2] Is the colour ‘red’ defined with sufficient clarity and precision in this case?

The focal point of the case then turned to s.3(1)(a) of the 1994 Act, which states:

3(1) The following shall not be registered –
(a) signs which do not satisfy the requirements of section 1(1)...

In turn, s.1(1) reads states:

(1) In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

First, the Hearing Officer examined the issue of 'alleged mismatch' submitted by Sainsbury’s arguing that the contested trade mark was not ‘all red’ as claimed in the description, but contained fuchsia and white colours as well. The Hearing Officer acknowledged that 'there is room for argument as to whether the part of the protrusions shown in a fuchsia-like colour fall within the description ‘red’, However, for present purposes I accept that it does. [para 75]'

Then, how precisely must the colour be defined in the representation of a trade mark consisting of more than colour per se? The Hearing Officer sought guidance in the Sieckmann judgment, in which the Court of Justice of the European Union (CJEU) stated that a mark's representation must be 'clear, precise, self-contained, easily accessible, intelligible, durable and objective. [para 55]'

He also drew on the guidance from the Libertel case on how colour marks should be represented:

The Libertel judgment has been generally understood as meaning that neither a sample of the colour(s), nor merely descriptions of colour in words, such as ‘red’, are sufficiently clear, precise and/or durable to satisfy the requirement for a graphical representation of colour marks. Instead, the practice of using internationally recognised colour identification codes has become the usual way of representing such marks. [para 78]

Despite the contested mark not being a colour per se, the Hearing Officer held that there was no doubt that the same principle should apply to marks of all kinds. He therefore found the broad description of “red” was insufficiently precise, and the contested mark had been invalidly registered.

Appeal 

FBSA stated three grounds of appeal as follows:

• The Hearing Officer had erred in applying the Sieckmann criteria to a mark that is not a colour per se mark;
• The Hearing Officer had erred in failing to interpret the registration as being limited to the red colour shown in the pictorial representation of the registered mark;
• Alternatively, if the Sieckmann criteria applied to a mark that is not a colour mark per se and if the registration was not already limited, then the Registered Proprietor should be permitted pursuant to section 13(1)(b) of the Trade Marks Act 1994 to limit the rights conferred by the registration to the specific shade of the colour red defined by Pantone No 193C.

[1] Application of the Sieckmann criteria to colour pe se marks

FBSA pointed out that, since red was not the only essential characteristic, it need not to be defined with greater precision; Sainsbury’s stood with the Hearing Officer’s opinion: once the colour red was found to be an essential characteristic, it necessarily followed that the hue precision was required. 

Judge Hacon did not support the Hearing Officer’s 'neither necessary nor helpful [para 55]' approach tying the necessity of specifying a hue to the essential characteristic of the sign, mainly for the following two reasons:

(1) Neither the CJEU nor any other court had ruled that 'identifying the essential characteristics of a contested sign is a necessary preliminary step in the assessment of any other ground of invalidity of a trade mark. [para 47]'; 

(2) A sign may contain a feature that would 'plainly strike the eye of any observer' but does not qualify as an essential characteristic. Taking the Lego case as an example, 'a conspicuously red Lego brick', in the eyes of the CJEU, 'was nonetheless not an essential characteristic of the sign'. [para 49]

Instead, Judge Hacon opined that, as to the sign at issue, the assessment must be taken by reference back to s.1(1) of the 1994 Act, and the capacity to distinguish should be based on the entire mark:

… It seems to me that where a mark contains colour but is not a colour per se mark, the need for precision as to hue will depend on the extent to which other elements of the mark serve to make the mark capable of distinguishing. More exactly, it will depend on the extent to which the colour of the relevant feature of the mark contributes to making the mark capable of distinguishing and whether it is likely that only a particular hue will confer on the mark that capacity to distinguish. It will always be a question of fact and degree. [para 67]

Further, the judge found that customers in the marketplace relied very likely on the labelling, instead of the plain shape and colour of it, to identify FBSA’s products – the sign at issue was never used 'without other indicia [para 75]'. 

The question then was whether the sign at issue is capable of distinguishing the Babybel cheese from the cheese of other undertakings’ on the assumption that the hue used in the said sign may be any hue of red which, as the judge noted, FBSA 'cares to use and indeed is free to vary from time to time'. The possibilities of combination multiply considering the hues used for the main body of the puck differed from that used for the pull tags.

Having reviewed the evidence, the judge reached the conclusion on the balance of probabilities that:

The Trade Mark could be capable of distinguishing only if a particular hue of red used on the main body of the product is associated with FBSA’s cheese. It follows that the Trade Mark must be limited to a single hue of red... [para 76]

The first ground of appeal was thus rejected. 

[2] Whether the Trade Mark is limited to the hue of red shown in the picture

FBSA submitted that the colour red had been actually narrowed down to a hue, by its pictorial representation. In turn, Sainsbury’s argued that the graphical representation did not take precedence over the description:

… The description specified the colour red, but not any particular hue. The absence of any statement about hue (such as a Pantone number) was all the more striking because the description did expressly limit the shape to particular dimensions shown in the picture. Had the Trade Mark been filed with no description at all, the reader would of necessity fall back on the picture and assume that the colour of the Trade Mark was the hue shown in the picture. Alternatively, if the description had said ‘the colour red as shown in the representation’, the result would have been the same. As it is, a reader of the specification must take the description on file into account and would conclude that ‘the colour red’ encompassed any red hue. [para 78]

Sainsbury’s further referred to the Hearing Officer’s reasoning on this point:

…if reader did not reach this conclusion, the only viable alternative view would be that the description and the picture are inconsistent. The principle that such inconsistency results in a trade mark registration lacking the clarity and precision required by the Sieckmann criteria, first stated in Glaxo, has also been adopted by the CJEU, most recently in Red Bull GmbH v EUIPO (Case C-124/18 P) EU:C:2019:641: [para 79]
[37] Where the application is accompanied by a verbal description of the sign, that description must serve to clarify the subject matter and scope of the protection sought under trade mark law and such a description cannot be inconsistent with the graphic representation (see, to that effect, judgment of 27 March 2019, Hartwall, C-578/17, EU:C:2019:261, paragraphs 39 and 40).

Judge Hacon agreed with the Hearing Officer’s reasonings and rejected the second ground of appeal.

[3] Whether the proprietor should be permitted to specify Pantone 193C

The third ground of appeal, as noted by Judge Hacon, was actually an application to limit the rights conferred by the registration at issue by way of specifying that the colour red was a specific hue (Pantone 193C), by reference to the French national trade mark No 95/588423 from which the sign at issue takes priority. 

Judge Hacon noted the important distinction between 'a limitation which narrows the scope of acts which would infringe a trade mark and which would affect the description of the mark itself. [para 90]' Thus, he rejected FBSA’s application which would introduce an additional feature into the content of the sign at issue and in essence would affect the its description.

In view of the foregoing, the appeal was dismissed.

Comment

The Babybel 3D mark entered the UK trade marks register on 29 August 1997. At that time, it was accepted as a valid trade mark. The case flags several pitfalls that brand owners should be vigilant about, including the somewhat stricter requirements for registration of less conventional marks further to a string of case law and, as a result, changing practices. 

Probably it is also high time brand owners audited their portfolios and gave serious thoughts to the descriptions of their trade mark applications and registrations. Extra attention may need to be paid to those non-traditional marks filed prior to the Sieckmann and Libertel cases, to ensure that they are compliant with the updated requirements for registration, or, if there are potential vulnerabilities, consider to come up with coping strategies in good time.