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Good News / BAD News – September 2022

John Coldham, Charlie Bond and

Welcome to the third edition of the “Good News / BAD News” blog!

Our BAD Team (that is, our Brands, Advertising and Designs Team) serves as trusted advisers to some of the most valuable brands in the world and in this blog series, we share our recent experiences to help brand owners navigate the ever-changing landscape.

Here are some of the things we think you should know about right now…

1. Brands

Colour Me Purple – latest decision in the confectionary wars not so sweet for Nestle.

Background

Cadbury’s quest for its signature colour purple to be registered as a trademark in the UK continues with the latest battle in the confectionary wars.

The case is an appeal and arose from a now settled opposition raised by Nestle against various trademark applications for Cadbury’s signature colour purple. The opposition was first heard by Louise White (the “Hearing Officer“) on 12 April 2019, and in which two of Cadbury’s three marks were deemed invalid:

  1. Application No 3 019 361: The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods (the “First Mark“). The Hearing Officer upheld the opposition against the First Mark and deemed it invalid.
  2. Application No 3 025 822: The colour purple (Pantone 2685C), shown on the form of application (the “Second Mark“). The Hearing Officer upheld the opposition against the Second Mark and deemed it invalid.
  3. Application No 3 019 362: The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods (the “Third Mark“). The Hearing Officer rejected the opposition against the Third Mark and deemed it valid.

Despite the opposition being settled soon after this decision, the Comptroller-General of Patents, Designs and Trademarks sought to intervene and continue the appeal in order to create some certainty in an area which has otherwise been quite opaque. This decision to continue to appeal was approved by Meade J within his judgment.

Case law

Within his judgement Meade J applied the principles derived from the case law on registration of colour marks (notably the reasoning of the Court of Justice of the European Union (“CJEU“) in Libertel[1] and the Court of Appeal (“CA“) in a previous skirmish between Nestle v Cadbury[2]).

In Libertel, the CJEU decided that “a colour per se, not spatially delimited, may … have a distinctive character … provided that….it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective.” The CJEU indicated that a colour mark could therefore be sufficiently clear and precise by referencing an internationally recognised code such as Pantone or RAL within a registration.

In Nestle v Cadbury, Cadbury had again applied for the registration of the colour purple as a trademark. The application included a Pantone number and the description: “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”. This application was rejected by the CA because use of the word “predominant” created multiple different visual forms and led to the implication that other colours may be used but were not disclosed in the application. Per Libertel, the mark therefore lacked the necessary clarity to constitute a sign and so the application failed.

Decision

In this case, the specific questions which Meade J had to assess were as follows:

  1. By referring to the degree of application to the packaging, does the First Mark avoid the problem of ambiguity that the CA identified as having afflicted the mark in Nestle v Cadbury?
  2. By using a Pantone designation without reference to the manner of use, is the Second Mark capable of being a sign, or does it also fall foul of having issues with ambiguity as identified in Nestle v Cadbury?

Assessing the two colour mark applications which were at the core of the dispute, Meade J concluded as follows.

The First Mark, which was described as having been “applied to the packaging of the goods”, was invalid as it did not fulfil the requirements of a sign under S.1(1) Trade Mark Act (“TMA“). Meade J agreed with the previous decision of the Hearing Officer and asserted the description was “significantly, undesirably and unnecessarily unclear whether combination marks including purple and other colours would be within the scope of the right applied for“. It therefore was not capable of being a sign and registered as a trade mark.

The Second Mark, which made no reference to the packaging of the goods at all, was, in contrast, valid as it did fulfil the requirements of a sign. Meade J overturned the previous decision of the Hearing Officer in stating that the mark was valid. He affirmed that conceptually this was because the mark boiled down to one single thing: the colour purple. This meant that the registration was unaffected by the central problems which plagued the invalid First Mark, concerning how the colour was then applied to the packing.

Although not subject to the appeal, Meade J further commented that the Third Mark (“applied to the whole visible surface of the packaging of the goods“) was also capable of registerability in his view (and therefore agreed with the decision of the Hearing Officer). Unlike the First Mark, the Third Mark clearly stated how the colour would be applied to the packaging, thereby ensuring the mark was not ambiguous.

Impact

This case has affirmed the reasoning underpinning the Libertel decision – a single colour can be registered and function as a mark. What appears to remain the downfall of registering those colour marks is then meeting the criteria set out in S.1 TMA – ensuring that they are capable of clear and precise representation to the extent another’s goods can be distinguished.

Going forwards, therefore, those who wish to register colour marks will need to ensure that the description provided is sufficiently clear and precise. Even with reference to an internationally recognised code such as Pantone or RAL (as advised in Libertel) it is still possible for a colour mark not to meet the required standards set out in S.1 TMA and therefore be deemed un-registrable.

Indeed, as illustrated in Meade J’s decision, a simpler mark with a sole reference to the colour and code could be more likely to succeed in being registered due to its simple and one-dimensional nature. That said, this decision is silent on S.3(1)(b) TMA and therefore colour mark applicants may wish to be mindful of ensuring that in addition to their marks being clear and precise they also have a sufficiently distinctive character (or that the mark has acquired such a character through use – something that is very difficult to show with colour marks).

Within the judgement, Meade J also stressed that this case was not intended to give any categorical view on the infringement of colour marks, and only refers to the registerability of such marks. By overturning the Hearing Officer and allowing the registration of the Second Mark which does not make any reference to the application of the colour, Meade J appears to have given Cadbury a trade mark with broad scope to be enforced. The questions arising from this are:

  1. How will the mark will be interpreted when being enforced against, for example, a potential infringer using the relevant shade of purple only partially on packaging or as part of a logo? Does the lack of any limiting language in the mark description mean any use of the colour is infringing?
  2. Might the mark be vulnerable to a non-use validity attack in the future if Cadbury’s packaging only uses the purple colour in conjunction with other marks/branding? Is it then not being used in the form it is registered?

We will have to wait for the next battle of the confectionary wars to find out…

Strike a pose

The recent trend witnessed in the trademark world has been set by none other than our favourite sportspersons, who have been attempting to trademark logos of their signature victory celebration pose. Notable mentions include Sir Mo Farah’s application to trademark his “Mobot” move and Gareth Bale’s filing to trade mark his “Eleven of Hearts” gesture. Usain Bolt has now become the latest sportsperson to go down this path, attempting to trade mark his iconic “Lightning Bolt” gesture in the US.

This application is not unexpected as Usain Bolt has held trademarks for his Lightning Bolt gesture in both the UK and EU for the last decade. To accompany his existing marks, Usain Bolt filed an application to the US Patent and Trademark Office on 17 August for an image that depicts the “silhouette of a man in a distinctive pose, with one arm bent and pointing to the head, and the other arm raised and pointing upward“, most commonly known as the “Lighting Bolt” move. The recognisable gesture is intended to be used on various merchandise and branding such as clothing, jewellery and shoes as well as restaurants and sports bars.

As explained by our very own John Coldham in a recent Telegraph article, trademarking the pose would not prevent people from replicating the gesture for fun, but would instead concern commercial products and services where consumers would expect the product or service to have some link or endorsement from Usain Bolt.

Our comments on this recent trend have been published in The Telegraph.

2. Advertising               

A chance to win great prizes…

For many years the law on prize promotions in Northern Ireland has been different to the rest of the UK, but due to a recent change in Northern Irish law this position has now changed.

The passing of the Betting, Gaming, Lotteries and Amusements (Amendment) Act (Northern Ireland) 2022 means that companies running prize promotions in the UK can now require entrants to purchase a product or service in order to participate in prize draws, provided the price of the promotional product is not inflated to cover the cost of running the promotion.

What does this mean in practice? Promoters are no longer required to exclude Northern Ireland from prize promotions nor do they have to provide an alternative free entry route.

3. Designs            

Designing frameworks

You may recall that our first issue of the Goods news/BAD news blog included a mention of the UK Intellectual Property Office’s (UKIPO) consultation on UK designs law. The UKIPO had called for views on ways to improve the designs framework in the UK in order to enable rights holders to protect designs and enforce their rights.

This was a unique opportunity to “design” legislative action which will impact the future of the designs system in the UK and one which we could not resist… Following our own submissions to the UKIPO we are closely watching this space for what could be a major change in the UK’s designs framework. 

4. Cost cap increase at IPEC

As explained by John Coldham and Arnie Francis in their recent article, the Intellectual Property Enterprise Court (“IPEC”) is increasing its cost caps in October. This increase means that as of October 2022, the overall costs cap for liability will increase from £50,000 to £60,000 and the overall costs cap for quantum will go up from £25,000 to £30,000. In other words, a successful party in an IPEC multi-track claim could be awarded costs at a maximum total of:

This is quite the change as stage caps have not increased since 2013 and the overall caps have remained unchanged since they were fixed in 2010.

5. Team news

Finally, we cannot end this blog without mentioning the excellent work our BAD team and our brand enforcement volunteers did during the Birmingham 2022 Commonwealth Games, working closely in conjunction with the Games’ internal legal team. Our favourite moments included:

We are so proud to have played our part in bringing Birmingham 2022 to life as Official Legal Advisers!

[1] Libertel Groep BV v Benelux-Merkenbureau Case C-104/01

[2] Nestlé v Cadbury UK Ltd [2013] EWCA Civ 1174

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