Fromageries Bel SA v J Sainsbury Plc
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 12 December 2019 |
| Neutral Citation | [2019] EWHC 3454 (Ch) |
| Date | 12 December 2019 |
| Docket Number | Case No: CH-2019-000068 |
| Court | Chancery Division |
[2019] EWHC 3454 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
ON APPEAL FROM THE TRADE MARKS REGISTRY
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
HIS HONOUR JUDGE Hacon
(Sitting as a Deputy High Court Judge)
Case No: CH-2019-000068
Michael Edenborough QC and Tim Bamford (instructed by Collyer Bristow LLP) for the Appellant
Simon Malynicz QC (instructed by Lewis Silkin LLP) for the Respondent
Hearing date: 9 October 2019
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
HIS HONOUR JUDGE Hacon
Introduction
This is an appeal from the decision dated 13 February 2019 of Allan James sitting as a Hearing Officer of the Trade Marks Registry (‘the Decision’) in which he found that UK registered trade mark no. 2 060 882 (‘the Trade Mark’) is invalidly registered. The Trade Mark is owned by the Appellant (‘FBSA’).
Michael Edenborough QC and Tim Bamford appeared for the FBSA, Simon Malynicz QC for the Respondent (‘Sainsbury's’).
The Trade Mark
The Trade Mark is registered in class 29 in relation to cheese. It was sometimes identified in the evidence by reference to FBSA's Mini Babybel cheese. This is the pictorial representation:
The trade mark is identified to be a three dimensional mark with the following description:
“The mark is limited to the colour red. The mark consists of a three dimensional shape and is limited to the dimensions shown above.”
Before the Hearing Officer it was argued that the Trade Mark does not satisfy either s.3(1)(a) or s.3(2) of the Trade Marks Act 1994 (‘the 1994 Act’) and should therefore be declared invalid pursuant to s.47(1).
The argument under s.3(2) was dismissed. The argument under s.3(1)(a) was advanced on four grounds, of which one succeeded. It was that ‘the colour red’ in the description did not provide sufficient clarity and precision. A particular hue of red should have been specified. FBSA now appeals that finding.
Sections 1(1) and 3(1)(a)
Sections 1(1) and 3(1)(a) of the 1994 Act provide:
“ 1. (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.
…
3. (1) The following shall not be registered –
(a) signs which do not satisfy the requirements of section 1(1),
…”
The Sieckmann criteria
In the Decision the Sieckmann criteria were discussed. These are taken from the judgment of the Court of Justice in Sieckmann v Deutsches Patent-und Markenamt (C-273/00) EU:C:2002:748; [2003] Ch 487 in which the law on the graphic representation of a trade mark was explained. The main point in issue in Sieckmann was whether a trade mark may consist of a sign which cannot be perceived visually. In the course of saying that it could, the Court set out criteria, summarised in paragraph 55, which have since been applied in relation to all signs. The criteria are that the sign:
“… can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”
The Decision
By way of a preliminary step, before considering the various grounds on which the Trade Mark was said to be invalid, the Hearing Officer decided which were the ‘essential characteristics’ of the Trade Mark:
“[40] 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.”
Dealing first with the objections to validity under subsections 3(2)(a), (b) and (c), the Hearing Officer said that his finding that the colour red is an essential characteristic of the Trade Mark was enough by itself to reach a finding that the application for invalidation based on grounds under s.3(2) failed, although he went on to consider other arguments.
Turning to s.3(1)(a) the Hearing Officer addressed the question of how many reds are shown in the pictorial representation of the Trade Mark:
“[75] … In my view, 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. I therefore reject [Sainsburys'] claim that the presence of the parts of the mark in fuchsia and white creates a mismatch between the pictorial representation of the mark and the description, which renders the mark unintelligible.”
Having made that finding, the Hearing Officer next considered the question whether the colour red is defined with sufficient precision and clarity. He referred to the judgment of the Court of Justice on colour per se marks in Libertel Groep BV v Benelux-Merkenbureau (C-104/01) EU:C:2003:244; [2003] ECR I-3822:
“[78] 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.”
The Hearing Officer accepted that it was not invariably necessary to define precisely the colour or colours shown in marks. He continued:
“[81] However, in my view the Libertel requirements apply to every trade mark in which colour is an essential characteristic of the mark. If it were otherwise, the task of deciding whether two such marks were identical, or even similar, could be made impossible. And this would lead to the kind of uncertainty that the Libertel requirements are intended to avoid. [original underlining]
[82] It follows from my finding at paragraph 40 above that I consider the colour red to be an essential characteristic of the contested mark. The question whether the colour red is defined with sufficient precision is therefore of decisive significance.”
The Hearing Officer referred to UK decisions in which specificity as to colour had been in issue: Robert McBride Ltd's Trade Mark Application [2003] RPC 19 and Calor Gas (Northern Ireland) Ltd (unrep.) (BL O/340/06) and said:
“[84] It therefore seems clear that in the case of a mark in which colour is important, such as this one, defining the colour with the broad description ‘red’ is insufficiently precise to satisfy the requirement for a graphical representation of the trade mark.
[85] I do not accept that this deficiency is cured by the presence of the cherry and fuchsia-like colours shown in the pictorial representation of the trade mark. I find the colours shown in the picture of the mark do not limit the mark to the shades of red shown. This is because (i) the description of the mark does not say so, and (ii) there is no rule that the pictorial representation of the mark takes precedence over the description so that it would be appropriate to infer that the claim to the colour ‘red’ is limited to the shades of red shown in the picture.”
With regard to his point (ii), the Hearing Officer relied on Glaxo Wellcome UK Ltd v Sandoz Ltd [2017] EWCA Civ 335; [2017] FSR 33, drawing an analogy with this case and thereby the principle that the picture in a trade mark specification could not be relied on to limit the meaning conveyed by the description.
The Hearing Officer then considered three alternatives: the primary indication of the subject matter of the trade mark should be taken (a) from the written description, (b) the picture or (c) neither.
If primary guidance comes from the written description, ‘the colour red’ does not satisfy the Libertel requirements. If it is drawn from the picture, the absence of colour identification codes means that the colours are not represented in an objective and durable manner:
“[89] … This is because the pictorial representation of the colours on the register is only as accurate as the process used to capture the colours when they were scanned from the application into the electronic register. The original representation is liable to change over time in the same way as a physical sample of the goods.”
The final alternative was that neither the pictorial representation nor the written description of the Trade Mark should be considered as secondary to the other. This would lead to ambiguity. Some would regard the mark as covering any sort of red, others only cherry red and fuchsia as shown in the picture. The Hearing Officer referred again to Glaxo, this time noting the finding of the Court of Appeal that leaving the public in a state of confusion in that way renders a mark invalid.
For those reasons the Hearing Officer found that the Trade Mark did not satisfy s.3(1)(a) of the Act and that it should be declared invalid.
The issues in the appeal
The grounds of appeal as set out in the Appellant's Notice were:
(1) The Hearing Officer erred in applying the Sieckmann criteria to a mark that is not a colour mark per se.
(2) The Hearing Officer erred in failing to interpret the registration as being limited to the red colour shown in the pictorial representation of the registered mark.
(3) Alternatively, if the Sieckmann criteria apply 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...
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