‘Unconventional’ trade marks

A trademark can consist of a logo, or word; but may also be less conventional and take the form of a colour, shape or smell.

Two significant rulings on unconventional trade marks have just been handed down from the UK Court of Appeal.  Both cases involve the interpretation of Article 2 of the Trade Marks Directive (2008/95/EC), and will influence the decision of future registrations of unconventional or ‘exotic’ trade marks. Article 2 provides that, to be registered, a mark must be a “sign” and “capable of being represented graphically”, which in this context create further problems than a standard text or logo mark.

The landmark decision on the Cadbury application to register the colour purple (Pantone 2685C) has just been passed in the case ofSociété Des Produits Nestlé S.A. v Cadbury UK Limited. The registration failed after a 4 year attempt by the confectionary giant Cadbury to register the colour purple, for “chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate” in class 30.

Colours have been successfully registered as trade marks before; one famous example may be demonstrated by the case of Libertel Groep BV v Benelux-Merkenbureau; where Libertel was permitted to register the colour orange in respect for the ‘Orange’ phone network. Therefore the issue was not that a colour itself could not satisfy the requirements of registration; but that the mark in question was not “capable of being graphically represented”, if the colour trade mark was being used in a variety of patterns and styles. A trade mark must have clarity, precision, objectivity and durability, whilst the representation in the public register of trade marks must be self-contained, easily accessible and intelligible. These qualities could not be satisfied if the mark could take on a multitude of different appearances and a decision to register the trade mark would also give Cadbury’s an unfair advantage to their competitors.

The second case was (1) JW Spear & Son Limited (2) Mattel Inc (3) Mattel UK Limited v Zynga Inc which similarly was refused registration; on the same day as the Cadbury’s decision. Mattel owned the trade mark for a scrabble tile; “a three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10.” The Tile Mark was registered in respect of “computer game adaptations of board games” in class 9. Mattel claimed that Zynga was infringing its Tile Mark, by the marketing of a digital game, and issued trade mark infringement proceedings. Zynga argued that the Tile Mark was not “a sign capable of graphic representation” because of the large variety of representations encompassed by it, and therefore was not a mark compatible with Article 2 and should not have been registered. Zynga also claimed that it was unfair of Mattel to own the monopoly of ivory-coloured three dimensional tile of indeterminate size with a letter and numeral somewhere on its face. The Judge agreed with Zynga and stated that the Tile Mark did not comply with the requirement that it be “capable of graphic representation” because the representation was not clear, precise, intelligible or objective, and that likewise with the colour purple for the Cadbury’s packaging, the mark would not have clarity, precision and objectivity and the monopolisation of the mark would also create an unfair advantage.

Saowanee Kristin