Cadbury UK Ltd v The Comptroller General of Patents Designs and Trade Marks

JurisdictionEngland & Wales
JudgeMr John Baldwin
Judgment Date18 April 2016
Neutral Citation[2016] EWHC 796 (Ch)
Docket NumberCase No: Ch/2015/0325
CourtChancery Division
Date18 April 2016

[2016] EWHC 796 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

INTELLECTUAL PROPERTY

ON APPEAL FROM

THE REGISTRAR OF TRADE MARKS

Decision No O-281-15

Royal Courts of Justice, Rolls Building

Fetter Lane, London, EC4A 1NL

Before:

Mr John Baldwin QC

(sitting as a Judge of the Chancery Division)

Case No: Ch/2015/0325

Between:
Cadbury UK Limited
Appellant
and
The Comptroller General of Patents Designs and Trade Marks
Respondent

and

Société Des Produits Nestlé S.A.
Intervener

Iain Purvis QC (instructed by Charles Russell Speechlys LLP) for the Appellant

Nicholas Saunders (instructed by the Treasury Solicitor) for the Respondent

Simon Malynicz QC (instructed by RGC Jenkins & Co) for the Intervener

Hearing date: 6 th April 2016

1

This is an appeal against the decision of Hearing Officer, Edward Smith for the Registrar of Trade Marks, whereby he refused a request made by Cadbury UK Ltd, to delete a mark from a series of trade marks, as permitted by section 41 of the Trade Marks Act and the rules made thereunder. The request was made pursuant to rule 28(5) of the Trade Mark Rules 2008 and the mark in question is number 2020876A ('876'), registered as of 19 May 1995, and it appears on the register as:

together with the following description:

The mark consists of the colour purple 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.

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.

It is not clear why the description is repetitive and no-one had an explanation for or appeared to be concerned about this.

2

Nestlé has applied for and been given permission to intervene on this appeal and I am grateful for its submissions.

3

Cadbury's request was made following a Court of Appeal decision, Société Des Produits Nestlé S.A v Cadbury UK Ltd [2013] EWCA Civ 1174, in relation to a mark with the same description but a different number (namely 2376879 ('879')). That decision concerned a successful opposition by Nestlé to an application for registration under this different number, being another attempt by Cadbury to seek trade mark rights in connection with the colour purple and its business in chocolate. The issue with which the Court of Appeal were concerned was whether the description of the mark in the application satisfied two of the requirements of section 3(1)(a) of the Act, namely that it be 'a sign' and that it be 'capable of graphical representation'.

4

The gist of the Court of Appeal's decision was that a mark with a description which is the same as that of the mark in suit is not suitable for registration as a trade mark. The matter was explained by Sir John Mummery at [55]:

55 In brief, the description of the mark as including not just the colour purple as a sign, but other signs, in which the colour purple predominates over other colours and other matter, means that the mark described is not "a sign." There is wrapped up in the verbal description of the mark an unknown number of signs. That does not satisfy the requirement of "a sign" within the meaning of Article 2 1, as interpreted in the rulings of the CJEU, nor does it satisfy the requirement of the graphic representation of "a sign", because the unknown number of signs means that the representation is not of "a sign." The mark applied for thus lacks the required clarity, precision, self-containment, durability and objectivity to qualify for registration.

5

Cadbury was concerned that this reasoning applies to the 876 mark just as much as it does to the 879 mark and accordingly that the 876 mark is potentially vulnerable to an invalidity attack. It seeks to head off such an attack by deleting the expression, "or being the predominant colour applied to the whole visible surface," from the description of the mark, thereby limiting the mark to a sign consisting of the colour purple applied to the whole visible surface of the packaging of the goods.

6

Cadbury's scheme for achieving this result is to contend that the description of the mark as registered is in fact a description of two marks, one of which consists of the colour purple applied to the whole visible surface of the packaging and the other of which consists of the colour purple being the predominant colour applied to the whole visible surface of the packaging, that these two marks are series marks, and that the second of the two marks can be deleted pursuant to section 41 of the Act, thereby leaving a single

mark which is validly registered (following Libertel Case C-104/01, [2004] FSR 4)
7

The relevant parts of section 41 of the Act are:

41. — (1) Provision may be made by rules as to—

(a) the division of an application for the registration of a trade mark into several applications;

(b) the merging of separate applications or registrations;

(c) the registration of a series of trade marks.

(2) A series of trade marks means 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.

(3) Rules under this section may include provision as to—

(a) the circumstances in which, and conditions subject to which, division, merger or registration of a series is permitted, and

(b) the purposes for which an application to which the rules apply is to be treated as a single application and those for which it is to be treated as a number of separate applications.

The relevant rule 2, taken from The Trade Marks Rules 2008 (as amended) ('the Rules'), reads as follows:

Registration of a series of trade marks; section 41 (Form TM12)

28.—(1) An application may be made in accordance with rule 5 for the registration of a series of trade marks in a single registration provided that the series comprises of no more than six trade marks.

(1A) Where an application for registration of a series of trade marks comprises three or more trade marks, the application shall be subject to the payment of the prescribed fee for each trade mark in excess of two trade marks.

(2) Following an application under paragraph (1) the registrar shall, if satisfied that the marks constitute a series, accept the application.

(5) At any time the applicant for registration of a series of trade marks or the proprietor of a registered series of trade marks may request the deletion of a mark in that series and, following such request, the registrar shall delete the mark accordingly.

(6) Where under paragraph (5) the registrar deletes a trade mark from an application for registration, the application, in so far as it relates to the deleted mark, shall be treated as withdrawn.

and rule 5, as referred to in rule 28(1), in so far as is relevant is:

Application for registration; section 32 (Form TM3)

5.—(1) An application for the registration of a trade mark (other than a transformation application, which shall be filed on Form TM4) shall be filed on Form TM3 or, where the application is filed in electronic form using the filing system provided on the Office website, on Form e-TM3.

(1A) Where an application is filed on Form TM3 (a 'standard application') the application shall be subject to the payment of the standard application fee and such class and series fees as may be appropriate.

The relevant rule when 876 was applied for is in these terms 3:

21.—

(1) The proprietor of a series of trade marks may apply to the registrar on Form TM3 for their registration as a series in a single registration and there shall be included in such application a representation of each mark claimed to be in the series; and the registrar shall, if satisfied that the marks constitute a series, accept the application.

(2) At any time before preparations of publication of the application have been completed by the Office, the applicant under paragraph (1) above may request on Form TM12 the division of the application into separate applications in respect of one or more marks in that series and the registrar shall, if he is satisfied that the division requested conforms with section 41(2), divide the application accordingly.

(3) At any time the applicant for registration of a series of trade marks or the proprietor of a registered series of trade marks may request the deletion of a mark in that series, and the registrar shall delete the mark accordingly.

(4) The division of an application into one or more applications under paragraph (2) above shall be subject to the payment of a divisional fee and such application and class fees as are appropriate.

8

The Hearing Officer refused Cadbury's request for three reasons and he made the preliminary comment ([12] of the Decision) that the Court of Appeal judgment could not be read as concluding that the verbal description of the mark was, in effect, a description of two marks. The first reason for refusal that he gave ([13] to [17] of the Decision) was that the trade mark was not applied for as a series trade mark and since there had been no request by the proprietor for registration as a series trade mark then the request for deletion of one of the series could not be entertained.

9

The second reason was that, following the decision of the Court of Appeal, the words sought to be deleted do not actually describe a mark and,

accordingly, there is no mark to be deleted ([18] to [25] of the Decision) pursuant to the provisions for deleting series marks
10

The third reason was that the deletion requested would involve an alteration of the mark contrary to section 44 of the Act ([26] to [39] of the Decision). This section is in these terms:

44. — (1) A registered trade mark shall not be altered in the...

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