Societe des Produits Nestle SA v Unilever Plc; Unilever Plc's Trade Mark Application
| Jurisdiction | England & Wales |
| Judge | Mr Justice Jacob |
| Judgment Date | 18 December 2002 |
| Neutral Citation | [2002] EWHC 2709 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: CH 2001 APP/0731 |
| Date | 18 December 2002 |
[2002] EWHC 2709 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
The Honourable Mr Justice Jacob
Case No: CH 2001 APP/0731
Cross- Appeal CH 2002 APP/0049
In the Matter of the Trade Marks Act 1994
And in the Matter of Trade Mark Application Numbers 2000661 and 2000662
And in the Matter of Oppositions Thereto Numbers 45851 and 46305
Colin Birss (instructed by Bird & Bird) for the Appellant/Opponent
Richard Miller QC (instructed by DLA) for the Respondent/Applicant
Hearing dates: 2–3 December 2002
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.
THE HON MR JUSTICE JACOB
Mr Justice Jacob
As long ago as 31 st October 1994 Unilever applied to register two trade marks for "ice cream dessert products" under Nos. 2,000,661 and 2,000,662. In each case they claim that "the mark consists of a 3-dimensional shape." Pictures of the shape are as follows:
,000,661 (the "white mark"):
This is a rather poor picture (though it is the one on the Patent Office website). Actually the product has a white "wavy" structure on top—as can be imagined from the rather better picture of the other mark. Note what a Dutch court called the "Franz Hals frill" running along the side. No. 2,000,662 (the "dark mark"):
It may be noted that the dark mark is merely the same as the white mark but with dark chocolate on top. The layers are different in number and arrangement too.
The Legal Provisions
Pursuant to Art. 2 of the Trade Marks Directive 89/104:
"A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other under undertakings."
Under Art 3(1) of the Directive "the following shall not be registered or if registered shall be liable to be declared invalid:
(a) signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(e) signs which consist exclusively of:
— the shape which results from the nature of the goods themselves, or
— the shape of goods which is necessary to obtain a technical result, or
— the shape which gives substantial value to the goods."
There is a qualification to this contained in Art 3(3):
"A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character."
The case turns on the UK statutory equivalents of these provisions, which I need not set out separately.
Proceedings in the Registry
Unilever supported their applications with evidence of use. The Registry thought that was enough, accepted the applications for registration and duly advertised them. Nestlé opposed. After evidence had been filed and a hearing conducted, the Registrar's hearing officer rejected the opposition to the dark mark but upheld it in relation to the white mark. Both sides now appeal.
Nestlé's grounds of opposition were based on the UK provisions corresponding to:
Art. 3(1)(e) first head—"nature of the goods themselves";
Art. 3(1)(a) "cannot constitute a trade mark";
Art. 3(1)(b) "devoid of any distinctive character";
Art. 3(2)(d) "application made in bad faith".
Art. 3(2)(d)—"bad faith"
I need say little about this allegation—it was based on a suggestion that somehow a patent monopoly was being extended. That is miles from bad faith. An allegation of bad faith should only be made when dishonesty or something approaching it (such as conduct falling short of acceptable commercial behaviour) can properly be alleged with full particulars. It is a serious allegation, not one to be thrown in the pot along with other, more conventional points (see Royal Ensign TM, Appointed Person Simon Thorley QC, 21 st July 2001 and Gromax v Don & Low [1999] RPC 367). Not surprisingly it failed in this case. Originally there was an appeal in respect of the point. Nestlé also served a Respondent's Notice raising "bad faith" in Unilever's white mark appeal. But "bad faith" was abandoned in both appeals just prior to the December hearing. The hearing officer's appropriately terse rejection of the point was right.
Art 3(1)(e)—third head, "substantial value" not pleaded or in issue
What is conspicuous by its omission from the grounds of opposition is the third head of Art.3(1)(e)—"Signs which consist exclusively of the shape which gives substantial value to the goods." I cannot imagine why this was not taken. For the appearance of Viennetta is obviously intended to attract customers as compared with other designs. It is clearly arguable, probably strongly arguable, that the appearance adds value to the product and may serve only that purpose being essentially an aesthetic creation. Unilever indeed registered the shape as a design, a point not actually even put in evidence before the Registry even though the Viennetta box gives the registered design number. Nestlé recognise it was a blunder not to plead this ground. In February, when these appeals first came before me, they applied to amend their grounds of opposition to bring this one in. But that would have meant giving Unilever an opportunity to put in evidence—and in effect probably remitting the matter to the Office. That I was not prepared to do, particularly since Mr Miller indicated on behalf of Unilever that Nestlé would be free to launch a subsequent attack on the marks based on this ground if their present attacks failed.
I refused a renewed application to add this ground when the case came back having been adjourned from February when the ECJ's judgment in Philips was shortly expected. The reason for the adjournment was that it was agreed that the decision might assist in this case. In the event it is not of complete assistance. For that reason I have decided that I should refer some questions to the Court. The parties were agreed that I should express my provisional view since that might be of assistance. Accordingly I do so.
Art. 3(1)(e) first head—shape which results from the nature of the goods themselves?
Mr Birss, for Nestlé, puts his case this way: Viennetta has always been sold and advertised with prominent use of the word trade marks Walls and Viennetta. Those are the trade marks. The product is the three-dimensional ice-cream with chocolate got up in a fancy way. The "nature of the goods" is the shape—it is what makes this ice-cream product different from others and is its "nature."
Mr Birss accepts that English case law is against him. Aldous LJ in Philips [1999] RPC 809 at p.820 said this:
"They [the defendants] submitted that the words "the goods" should be construed as meaning the goods for which the trade mark was intended to be used and in respect of which it was said to have acquired a distinctive character; in this case the head of a three headed rotary shaver. That being so, the shape exclusively resulted from the nature of the goods.
In my judgment the words "the goods" refer to the goods in respect of which the trade mark is registered. Those are the goods which it must be capable of distinguishing and in respect of which the proprietor obtains, on registration, the exclusive right to use the trade mark. The words are used to refer to any of the goods falling within the class for which the trade mark is registered. For example, registration of a picture of a banana in respect of "fruit" would be just as objectionable as registration of that word would be in respect of "bananas". The purpose of the subsection is to prevent traders monopolising shapes of particular goods and that cannot be defeated by the skill of the applicant when selecting the class of goods for which registration is sought.
Subsection 2(a) has to be construed in the context of subsections (b) and (c). It is intended to exclude from registration basic shapes that should be available for use by the public at large. It is difficult to envisage such shapes, except those that are produced in nature such as bananas. But I believe that the judge was right to conclude that the trade mark was not prevented from registration by this subsection. The trade mark is registered in respect of "electric shavers". There is no one shape, let alone that depicted in the trade mark, which results from the nature of such shavers."
Although I was upheld on this point, I had put it slightly differently. I said:
"This provision, considered purely academically, poses problems. What are the "goods themselves"? A shape will define part or the whole appearance of a given object. If that object is regarded as the goods then the shape will always result from the nature of the goods. Take this case. If you regard "the goods" as "rotary shavers having three equilateral heads and a face plate" then the shape results from the nature of the goods. If on the other hand you regard "the goods" as just rotary shavers, or more generally electric shavers or even more generally as shavers, electric or otherwise, then the shape does not result from the nature of the goods.
How then does one define what "the goods" are? It was suggested at one...
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