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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Cadbury UK Ltd v The Comptroller General of Patents Designs and Trade Marks [2016] EWHC 796 (Ch) (18 April 2016) URL: http://www.bailii.org/ew/cases/EWHC/Ch/2016/796.html Cite as: [2016] EWHC 796 (Ch) |
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CHANCERY DIVISION
INTELLECTUAL PROPERTY
ON APPEAL FROM
THE REGISTRAR OF TRADE MARKS
Decision No O-281-15
Fetter Lane, London, EC4A 1NL |
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B e f o r e :
(sitting as a Judge of the Chancery Division)
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CADBURY UK LIMITED |
Appellant |
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- and – |
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THE COMPTROLLER GENERAL OF PATENTS DESIGNS AND TRADE MARKS -and- SOCIÉTÉ DES PRODUITS NESTLÉ S.A. |
Respondent Intervener |
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Nicholas Saunders (instructed by the Treasury Solicitor) for the Respondent
Simon Malynicz QC (instructed by RGC Jenkins & Co) for the Intervener
Hearing date: 6th April 2016
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Crown Copyright ©
together with the following description:
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.
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.
It is not clear why the description is repetitive and no-one had an explanation for or appeared to be concerned about this.
55 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[1], 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.
41. - (1) Provision may be made by rules as to-
(a) the division of an application for the registration of a trade mark into several applications;
(b) the merging of separate applications or registrations;
(c) the registration of a series of trade marks.
(2) A series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.
(3) Rules under this section may include provision as to-
(a) the circumstances in which, and conditions subject to which, division, merger or registration of a series is permitted, and
(b) the purposes for which an application to which the rules apply is to be treated as a single application and those for which it is to be treated as a number of separate applications.
The relevant rule[2], taken from The Trade Marks Rules 2008 (as amended) ('the Rules'), reads as follows:
Registration of a series of trade marks; section 41 (Form TM12)
28.- (1) An application may be made in accordance with rule 5 for the registration of a series of trade marks in a single registration provided that the series comprises of no more than six trade marks.
(1A) Where an application for registration of a series of trade marks comprises three or more trade marks, the application shall be subject to the payment of the prescribed fee for each trade mark in excess of two trade marks.
(2) Following an application under paragraph (1) the registrar shall, if satisfied that the marks constitute a series, accept the application.
...
(5) At any time the applicant for registration of a series of trade marks or the proprietor of a registered series of trade marks may request the deletion of a mark in that series and, following such request, the registrar shall delete the mark accordingly.
(6) Where under paragraph (5) the registrar deletes a trade mark from an application for registration, the application, in so far as it relates to the deleted mark, shall be treated as withdrawn.
and rule 5, as referred to in rule 28(1), in so far as is relevant is:
Application for registration; section 32 (Form TM3)
5.- (1) An application for the registration of a trade mark (other than a transformation application, which shall be filed on Form TM4) shall be filed on Form TM3 or, where the application is filed in electronic form using the filing system provided on the Office website, on Form e-TM3.
(1A) Where an application is filed on Form TM3 (a 'standard application') the application shall be subject to the payment of the standard application fee and such class and series fees as may be appropriate.
The relevant rule when 876 was applied for is in these terms[3]:
21.-
(1) The proprietor of a series of trade marks may apply to the registrar on Form TM3 for their registration as a series in a single registration and there shall be included in such application a representation of each mark claimed to be in the series; and the registrar shall, if satisfied that the marks constitute a series, accept the application.
(2) At any time before preparations of publication of the application have been completed by the Office, the applicant under paragraph (1) above may request on Form TM12 the division of the application into separate applications in respect of one or more marks in that series and the registrar shall, if he is satisfied that the division requested conforms with section 41(2), divide the application accordingly.
(3) At any time the applicant for registration of a series of trade marks or the proprietor of a registered series of trade marks may request the deletion of a mark in that series, and the registrar shall delete the mark accordingly.
(4) The division of an application into one or more applications under paragraph (2) above shall be subject to the payment of a divisional fee and such application and class fees as are appropriate.
44. - (1) A registered trade mark shall not be altered in the register, during the period of registration or on renewal.
(2) Nevertheless, the registrar may, at the request of the proprietor, allow the alteration of a registered trade mark where the mark includes the proprietor's name or address and the alteration is limited to alteration of that name or address and does not substantially affect the identity of the mark.
(3) Provision shall be made by rules for the publication of any such alteration and the making of objections by any person claiming to be affected by it.
50 The crucial point stems from the misinterpretation of the verbal description of the graphic representation of the mark for which application is made. The description refers not only to the colour purple as applied to the whole visible surface of the packaging of the goods, but also to an alternative i.e. "or being the predominant colour applied to the whole visible surface … " The use of the word "predominant" opens 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. It is an application for the registration of a shade of colour "plus" other material, not of just of an unchanging application of a single colour, as in Libertel.
51 In my judgment, that description, properly interpreted, does not constitute "a sign" that is "graphically represented" within Article 2. If the colour purple is less than total, as would be the case if the colour is only "predominant", the application would cover other matter in combination with the colour, but not graphically represented or verbally described in the specific, certain, self-contained and precise manner required. The result would not be an application to register "a sign", in the accepted sense of a single sign conveying a message, but to register multiple signs with different permutations, presentations and appearances, which are neither graphically represented nor described with any certainty or precision, or at all.
52 The appearance and number of such other signs would be unknown both to the Registrar, who is responsible for the proper functioning of the registration system and is faced with the decision whether or not to register it on a public register, and to competitors, who would not be able to tell from inspecting the register the full scope and extent of the registration. To allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. It would also offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage.
Mr Purvis submitted that these passages contain a clear finding of two alternative marks. He contended that what his client was requesting was the deletion of the second mark, i.e. the one which the Court of Appeal had held to be invalid, and that there should be nothing objectionable in that.
.... the large number and detailed nature of the obstacles to registration set out in Arts 2 and 3 of the Directive, and the wide range of remedies available in the event of refusal, indicate that the examination carried out at the time of the application for registration must not be a minimal one. It must be a stringent and full examination, in order to prevent trade marks from being improperly registered. As the Court has already held, for reasons of legal certainty and good administration, it is necessary to ensure that trade marks whose use could successfully be challenged before the courts are not registered (Case C-39/97 Canon [1998] ECR I-5507 , para.[21]).
Note 1 Article 2 (which coincides with section 1(1) of the Act) 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. [Back]
Note 2 being the one in force at the time of the request for a deletion [Back]
Note 3 Trade Mark Rules 1994 [Back]
Note 4 under the present rules, there is a limit of six [Back]
Note 5 the application form for registration of a trade mark [Back]