Société Des Produits Nestlé S.a. v Cadbury Uk Ltd
| Jurisdiction | England & Wales |
| Judge | Sir John Mummery,Sir Timothy Lloyd,Lord Justice Lewison |
| Judgment Date | 04 October 2013 |
| Neutral Citation | [2013] EWCA Civ 1174 |
| Docket Number | Case No: A3/2012/2702 |
| Court | Court of Appeal (Civil Division) |
| Date | 04 October 2013 |
[2013] EWCA Civ 1174
Lord Justice Lewison
Sir John Mummery
And
Sir Timothy Lloyd
Case No: A3/2012/2702
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
HHJ BIRSS QC, Sitting as a Judge of the High Court
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Michael Bloch QC and Mr Simon Malynicz (instructed by RGC Jenkins & Co) for the Appellant
Miss Emma Himsworth QC and Mr Stuart Baran (instructed by Charles Russell LLP) for the Respondent
Hearing dates: 26 & 27 June 2013
Approved Judgment
Introduction
In what circumstances can a colour be registered as a trade mark? In this appeal the answer turns on two of the legislative requirements, as judicially interpreted: a trade mark must be (i) "a sign" and (ii) "graphically represented." Applications and registrations of the less conventional kind of subject matter, such as colour, are potentially problematical, especially if they cover a multitude of different visual forms.
This second appeal arises from an application by Cadbury UK Limited (Cadbury), the respondent, to register a trade mark for chocolate. It features a specified shade of the colour purple. The appeal is from an order made by HHJ Birss QC dated 1 October 2012: [2012] EWHC 2637 (Ch). He dismissed an appeal by Société des Produits Nestlé SA (Nestlé) from the decision of the Principal Hearing Officer to accept Cadbury's application. The judge directed that the Trade Mark Application No 2 376 879 should proceed to registration with the specification of goods in Class 30 in the following form:-
"Milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate."
Nestlé asks this court to set aside that order.
Lewison LJ granted permission for this appeal and for a second appeal on a similar point of principle in Appeal No. A3/2013/0062 JW Spear & Sons Limited & Ors v. Zynga Inc; [2012] EWHC 3345 (Ch) ( Zynga). At his direction both appeals were heard by the same constitution, this appeal going first and Zynga second.
Background
On 15 October 2004 Cadbury applied for a trade mark shown as a rectangle, which is a purple block when reproduced in colour, and described as:—
"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 subject matter of the application was not the colour purple per se: it comprised the colour swatch as a sample of the colour, the Pantone shade, and the verbal description.
Cadbury filed evidence of distinctiveness acquired through use of the mark. The application was accepted and published. It was opposed by the appellant Nestlé before the Principal Hearing Officer, who allowed the application with an amendment to the specification of goods, so that the mark would be registered in Class 30 for-
"Chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate."
In its unsuccessful appeal to the High Court Nestlé did not seek to overturn the key findings of the Hearing Officer that the mark applied for was capable of distinguishing the goods of one entity from those of another and was distinctive. Nestlé's objection to registration was based on initial principles: that the colour mark described in the application was not registrable because it was not "a sign" and was not capable of being represented graphically.
Nestlé's grounds of appeal in this court are that the judge made errors in relation to the requirements that a trade mark be "a sign" and that it be "graphically represented."
Alternatively, it is submitted that, if the issues on the interpretation of the Directive are not acte clair in Nestlé's favour, they should be the subject of a reference to the Court of Justice of the European Union (CJEU) under Article 267 of the Treaty for the Functioning of the European Union (TFEU).
The law
The Trade Marks Directive 2008/95/EC of 22 October 2008 (the Directive) states:-
"Article 2
Signs of which a trade mark may consist
A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Article 3
Grounds for refusal or invalidity
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;
…."
The provisions of the Directive were implemented in ss.1 and 3 of the Trade Marks Act 1994 (the 1994 Act). It is common ground that the effect of the Directive and of the 1994 Act is that to be registered a mark must be a "sign" and must be capable of being represented graphically. Nestlé argues that the mark applied for by Cadbury in this case does not satisfy those initial criteria.
The judge recognised that unconventional or "exotic" marks, such as colours, sounds and smells, give rise to conceptual problems, which are not encountered with more conventional trade names and logos. As the registration of a trade mark creates a form of intellectual property conferring a potentially perpetual monopoly in the mark and excluding everybody else from use in various ways, the point of principle has some public importance.
The cases
In his quest for the correct interpretation of the requirements for registration the judge considered the main judgments of the CJEU concerned with "exotic" trade mark registrations. Rather than repeat his valuable discussion of the authorities, I will touch briefly on the main point of each case and collect together the parts of the reasoning relevant to these two appeals:—
i) Libertel Groep BV v. Benelux-Merkenbureau Case C-104/01 [2003] ECR 1–3793
The point was whether Libertel, a telecommunications company, could register the colour orange as a trade mark for telecommunications goods and services. It was held that a colour not spatially defined is capable of being registered as a trade mark, provided that it satisfies the three conditions of (i) being a sign, (ii) being capable of graphical representation, and (iii) being capable of distinguishing the goods or services of one undertaking from another.
ii) Sieckmann v. Deutsche Patent — und Markenamnt Case C-273/00 [2002] ECR 1–11754
The point was whether the applicant could register the smell of a compound called ethyl nitrate as a trade mark. It was held that a sign did not have to be perceived visually. A smell could be a sign, if it could be represented graphically and thereby be identified as having the qualities of clarity, precision, objectivity and durability. The representation in the public register of trade marks must be self–contained, easily accessible and intelligible. Those requirements were not satisfied in that case.
iii) Heidelberger Bauchemie GmbH v. Bundespatentgericht Case C-49/02 [2004] ECR 1–6129
The point was whether an application to register a combination of the colours blue and yellow in every conceivable form as a trade mark could be granted. It was held the application should be refused, as it did not exhibit the required qualities of precision and uniformity required by Article 2 of the Directive.
iv) Dyson v. Registrar of Trade Marks Case C-321/03, [2007] ECR 1–687
The point was whether the transparent collection chamber of a vacuum cleaner could be registered as a trade mark. It was held that the mark applied for should be rejected, because it was for a property of the product concerned, not a sign indicating the source of the product. The mark applied for could take on a multitude of different appearances in a general and abstract manner covering all conceivable shapes of a transparent collecting bin forming part of the external surface of a vacuum cleaner. Its grant would give the applicant an unfair competitive advantage over competitors.
Some relevant points
Some general points relating to the requirements of Article 2 of the Directive, which are relevant to this case, can be picked out of the judgments:—
The conditions
(1) An application to register a trade mark must satisfy three conditions for the purposes of Article 2:-
(i) there must be a sign;
(ii) it must be capable of graphical representation;
(iii) it must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Purpose
(2) The purpose of the requirements is to prevent abuse of trade mark law in order to obtain an unfair competitive advantage.
Identification
(3) Identification requirements for entry of a trade mark on the public register of trade marks include clarity, intelligibility, specificity, precision, accessibility, uniformity, self-containment and objectivity.
Multitude of forms
(4) The identification requirements are not satisfied, if the mark could take on a multitude of different appearances, which would create problems for registration of the mark and give an unfair competitive advantage over competitors.
Colour without a message
(5) Colours are normally a simple property of things, or a means of decorating things. They are not normally capable of being a sign. A sign conveys a message. The sign is capable of...
To continue reading
Request your trial
-
Cadbury UK Ltd v The Comptroller General of Patents Designs and Trade Marks
...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......
-
Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) and Another v Sandoz Ltd
...of other undertakings." 25 Heidelberger Bauchemie, along with other cases, was considered by the Court of Appeal in Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174; [2014] R.P.C. 7. 26 Cadbury applied for a trade mark in respect of chocolate in various forms in Class 3......
-
Crafts Group LLC v M/S Indeutsch International
...this case law, but they are not always easy to apply, as domestic decisions such as Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174, [2014] Bus LR 134 demonstrate. In the present case it is not inconceivable, even if it is unlikely, that the English courts might take ......
-
Energy Beverages LLC v Frucor Suntory New Zealand Ltd
...n 4, at [51]. 14 At [55]. 15 At [87]. 16 Invalidity decision, above n 4, at [40]. 17 Sociêtê des Produits Nestlê SA v Cadbury UK Ltd [2013] EWCA Civ 1174, [2014] RPC 18 Invalidity decision, above n 4, at [56]. 19 High Court judgment, above n 5, at [33]. 20 See [24] above. 21 Société des P......
-
The End of Cadbury’s Purple Reign?
...protect ‘its’ purple colour against copy-cats seeking to pass off as Cadbury. Source: Société Des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174 (04 October 2013) This article was prepared by Farah Mukaddam (farah.mukaddam@nortonrosefulbright.com / +44 20 7444 5622) of Norton Rose......
-
Case Analysis: Nestlé v Cadbury
...referred to the previous English court decision involving these parties and the colour purple, which ended up in the Court of Appeal ([2013] EWCA Civ 1174). The judge had to consider whether the hearing officer was right to reject the '361 and '822 The judge noted that in Libertel the CJEU ......
-
Choc it out: Lindt’s golden bunny granted trade mark recognition in the EU
...dispute that traversed through the UK High Court, resulting in a final ruling from the UK Court of Appeal in 2013 against Cadbury ([2013] EWCA Civ 1174). It was found that Cadbury’s broad description of the mark meant it could not satisfy the requirement of being a single clear sign, but ra......