Two recent Court of Appeal judgments remind trade mark applicants to take great care in drafting applications particularly where 'non-standard' trade marks are concerned. Under current legislation the definition of a 'sign' which may be registered as a trade mark is wide. In practice, judges are wary of granting monopolies in more 'exotic' marks unless their scope is carefully delineated.
In Societe Des Produits Nestle S.A. v Cadbury UK Ltd , Cadbury's UK registration for the colour purple was cancelled, and in JW Spear & Son Ltd, Mattel Inc and Mattel UK Ltd v Zynga Inc. the cancellation of Mattel's application to register a Scrabble tile as a trade mark was upheld. The court was required to interpret Article 2 of the EUTrademarks Directive 2008/95 in both cases.
Article 2 states that a trade mark must be 'a sign' which is capable of 'being represented graphically'. Cadbury's application consisted of the colour purple (Pantone No. 2685C) and a description that the colour is 'applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods'. The Court held that the words covered multiple signs with different permutations, presentations and appearances arising from implied references to other colours and visual material which were not shown or described. The resulting lack of certainty meant that the application covered not one sign but many and so must fail.
Mattel's registration included a blank ivory coloured Scrabble tile with the description "on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10". This mark was also found not to be 'a sign' because of the number of possible permutations, presentations and combinations of the subject matter.
So where now for Cadbury and Mattel? The judge suggested that Cadbury might be successful in a new application if they claimed that the colour purple covered 50% or more of the visible surface. Whether they file such an application remains to be seen. No such judicial assistance was given to Mattel and it seems likely that this is the end of the road for their Scrabble tile registration.
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