Cadbury UK Ltd v The Comptroller General of Patents Designs and Trade Marks
| Jurisdiction | England & Wales |
| Judge | Lord Justice Baker,Lord Justice Floyd,Lord Justice Henderson |
| Judgment Date | 05 December 2018 |
| Neutral Citation | [2018] EWCA Civ 2715 |
| Date | 05 December 2018 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3/2016/3082 |
[2018] EWCA Civ 2715
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Mr John Baldwin QC sitting as a deputy High Court Judge
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Floyd
Lord Justice Henderson
and
Lord Justice Baker
Case No: A3/2016/3082
and
Iain Purvis QC (instructed by Charles Russell Speechlys LLP) for the Appellant
Nicholas Saunders QC (instructed by the Treasury Solicitor) for the Respondent
Simon Malynicz QC (instructed by Maucher Jenkins) for the Intervener
Hearing date: 21 November 2018
Judgment Approved
The principal issue raised by this appeal is whether it is open to the Registrar of Trade Marks (“the registrar”) to accept an application to alter a registered trade mark so as to delete a part of its description which has been held to render it invalidly registered. The principal route by which it is suggested that the registrar can do so is to treat the registration as a “series” of trade marks registered pursuant to section 41 of the Trade Marks Act 1994 (“the Act”), and then to allow deletion of the offending wording as a deletion of certain marks in the series.
Cadbury UK Limited (“Cadbury”) has for a long time promoted its chocolate bars using a particular purple colour on its packaging. The shade of purple corresponds to Pantone shade 2685C. On 19 May 1995 Cadbury filed a trade mark application which ultimately became registered trade mark number 2020876A (“the 876 mark”). The application was filed with a swatch of the colour purple. On the application form, Form TM3, the applicant stated simply that “ the mark consists of the colour purple”. Form TM3 includes a space adjacent to the rubric “ If the application is for a series of marks, indicate how many marks in the series.” Cadbury left this space blank on the Form TM3.
Cadbury applied for the mark to be registered for a wide range of goods in classes 29 and 30, but subsequently limited the specification of goods to “ chocolate in bar or tablet form”. The registrar initially objected to the application on the grounds of lack of distinctiveness, and this led to the filing of evidence on behalf of Cadbury evidencing the extent of use made of the colour. The registrar ultimately accepted the claim to distinctiveness, and no issue about distinctiveness arises on this appeal.
In the meantime, however, the registrar had been considering the proper approach to marks which sought to protect a colour. One issue was how such marks were to be represented on the register. On 2 April 1997 the registrar published a “Special Notice on Colour Trade Marks” in the Trade Marks Journal (“the Guidance”). Paragraph 5 of the Guidance was in the following terms:
“An application to register properly represented colour(s) as a trade mark is unlikely to face an objection from the Registrar that it is not a graphical representation of the trade mark, if it is made clear (in box 2 or 3 of form TM3) how the colour(s) constitute the applicant's mark. It may be possible to do this by, for example…
(b) [by] defining the mark as being the colour(s) covering the whole visible surface of, or the predominant colour(s) applied to, the visible surface of named items, eg packaging for the goods (see para 11 below)…”.
Paragraph 11 of the Guidance made clear that the registrar would be prepared to allow “clarification” of the sign after the application had been made, in particular so as to make explicit what is implicit. Thus, applicants who had made applications consisting exclusively of colour(s) might be allowed to make it explicit that the trade mark consists of the colour(s) when applied to the goods or their packaging.
On 26 August 1997 Cadbury applied to “clarify” the definition of the mark on their Form TM3 by addition of the words “ as shown applied to the packaging or labelling of goods covered by the registration”. The registrar replied on 9 September 1997 suggesting instead that the description of the mark be amended to:
“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.”
Cadbury responded, by letter of 22 September 1997, expressing reservations (which turned out to be prescient) about the use of the word “predominant” which it considered had difficulties of interpretation. It preferred instead the word “prominent”, (which might be thought equally unclear). A hearing was arranged at which this point was debated with a Hearing Officer, Mr Allan James, who was only disposed to accept the mark with the registrar's “predominant” wording. The Form TM3 was amended by the registrar, on behalf of Cadbury, but the space for indicating the number of marks in any series was still left blank.
The 876 mark was registered on 13 November 1998. It is common ground that the mark has the following description:
“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.”
The print out of the case details for the 876 Mark which we have in the papers (Supplementary Bundle tab 3 page 14) also includes the above description without the Pantone number defining the shade of purple. The two entries are against “Description of Mark” and “Mark claim/limit”, with the Pantone limitation appearing in the latter but not the former. Although, in the end, no party submitted that anything turns on this in the present case, it would obviously be preferable if the print out could be arranged to avoid such anomalies. The 876 mark is registered in respect of “ chocolate in bar or tablet form”.
On 5 June 2014 Cadbury wrote to the registrar asserting that the 876 mark “ in fact sets out a series of two marks, as is permissible under s 41 of the Act, implemented by Rule 28 of the Trade Mark Rules”. The two marks encompassed by the registration were said to be (a) the colour purple (Pantone 2685C) applied to the whole visible surface of the packaging of the goods; and (b) the colour purple (Pantone 2685C) being the predominant colour applied to the whole visible surface of the packaging of the goods. By its letter, Cadbury applied to delete (b) from its supposed series of marks, whilst retaining (a).
Cadbury claims that it was prompted to make this application by the judgment of this court in a long-running, contested opposition proceeding brought by the intervener (“Nestlé”) in connection with Cadbury's later trade mark application, number 2376879 (“the 879 mark”) also in respect of the colour purple and with the same description. The opposition ultimately succeeded before the Court of Appeal because the 879 mark, properly interpreted, did not constitute “a sign” that is “graphically represented”: see Société des Produits Nestlé SA v Cadbury UK Limited [2013] EWCA Civ 1174 (“ Cadbury 1”). As Sir John Mummery explained at paragraphs 50 and 51 of Cadbury 1, the language of the description extended not only to the case where the colour purple was applied to the whole visible surface of the packaging of the goods (“the whole surface wording”), but also to the case where purple is the predominant colour so applied (“the predominant colour wording”). The predominant colour wording opened the door to “ a multitude of different visual forms as a result of its implied reference to other colours and other visual material not displayed or described in the application and over which the colour purple may predominate.” The result was not an application to register “a sign” in the accepted sense of a single sign conveying a message, but to register multiple signs which were neither graphically represented nor described with any certainty or precision, or at all. Sir John Mummery summarised the position at [55] as follows:
“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, 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.”
The Guidance had thus proved to be misleading, although, in fairness to the registrar, it was issued before significant developments in the trade marks jurisprudence of the CJEU, which I summarise below. Cadbury appreciated that the objection which succeeded in Cadbury 1 would apply equally to its 876 mark, because it utilised the same wording. However, it inferred from the Court of Appeal's analysis that if the predominant colour wording could be removed from the description, leaving only the whole surface wording, the objection found to be established by the Court of Appeal against the 879 mark might be overcome for the 876 mark.
In a letter dated 7 October 2014, the registrar responded to Cadbury's application to delete the predominant colour wording by saying that he did not accept that the existence of the two alternatives in the description of the mark meant that the registration constituted a series. Further, he considered that the...
To continue reading
Request your trial