A recent IPO decision has clarified intellectual property rules and could prove game-changing in future.
On 13th February 2019, the UK Intellectual Property Office ruled the trade mark for the wax coating of Mini Babybel cheese as invalid and will be subsequently cancelled due to the ambiguity over the colour of the wax coating. This ruling comes twenty-three years after Fromageries Bel SA originally registered the mark.
The disputed mark is for a round, wax coating that is described as:
‘The mark is limited to the colour red. The mark consists of a three-dimensional shape and is limited to the dimensions shown above”
On 26th October 2017, J Sainsbury plc filed an application to invalidate the registration of the above mark. The original grounds for this application were that the trade mark does not comply with several requirements under Section 3 of the Trade Marks Act 1994. However, these grounds were contested by the Fromageries Bel S.A, which resulted in a case management conference where the judge issued directions identifying the relevant issues and limiting the amount of evidence that could be filed. The directions also included a requirement that evidence relating to the trade mark’s inherent distinctive character should be directed to the position at the relevant date of registration in 1996.
At the point of filing evidence, the applicant (Sainsbury) refined the grounds upon which its claim was based. These were:
- Section 3(1)(a) because the trade mark does not satisfy ss.1(1) and s.3(1)(a) of the Act because it is not graphically represented;
- Section 3(2)(a) because the trade mark consists exclusively of a shape which results from the nature of the goods themselves;
- Section 3(2)(b) because the trade mark consists exclusively of a shape which is necessary to achieve a technical result; and
- Section 3(2)(c) because the trade mark consists exclusively of a shape which gives substantial value to the goods.
Following the submission of evidence from both parties, the judge took an objective assessment of the essential characteristics of the mark in order to apply the Act accordingly. In the assessment, it was determined that although the presence of a limitation to the colour of the mark is a strong indication that colour is an indispensable element of the mark, it is wrong to take the mere presence of this limitation alone to be an essential characteristic. Further, it was held that the average consumer would regard dimensions as an important characteristic as, for example, a mark that is 40cm would make a very different impression than one that is 4cm. It was concluded that the essential characteristics of the mark were the colour ‘red’, the protrusions for the pull tag and the dimensions.
Decision on application under s.3(2) of Trade Marks Act 1994
Upon consideration of the evidence and arguments put forward by both J Sainsbury plc and Fromageries Bel S.A, the judge concluded that the application for invalidation of the mark based on the grounds under Section 3(2) above failed. It was determined that the exclusions of s.3(2) of the Act depended on the trade mark consisting exclusively of the shape of the goods, in accordance with precedent set by Lego Juris A/S v OHIM (Case C-49/09P).
Although the dimensions of the mark do not take the mark outside the scope of s.3(2) of the Act, the fact that the colour red is an essential characteristic of the contested mark, is deemed sufficient reason in itself to reject the invalidation under s3(2) of the Act. The judge additionally provided further reasoning, for the sake of thoroughness, stating that the evidence does not suggest the contested mark is of a generic and purely functional shape.
Decision on application under ss.1(1) and 3(1)(a) of Trade Marks Act 1994
The second application for invalidation claimed that the mark was not compliant with ss.1(1) and 3(1)(a) of the Act as it is not graphically represented. It is clear from Sieckmann v Deutsches Patent-und Markenamt (Case C-273/00) that the courts require all trade marks to be graphically represented in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
As such, this application was successful determining that the mark is not graphically represented in accordance with s.1(1) of the Act due to the ambiguity of the colour and the pictorial representation of the mark. The success of this invalidation application the IPO has rendered the mark invalid and cancelled.
The cost awards for cases before the IPO are scaled, with the highest award available based on the scale being £6,150. However, there was one small consolation for Babybel in that the judge decided the way the applicant pleaded and pursued the application amounted to unreasonable behaviour resulting in an order for Babybel to pay Sainsbury’s only the sum of £200 (which would only cover the official cancellation fee), significantly less than usual scale costs. This decision demonstrates that if a party’s conduct is deemed unreasonable, the cost award may be significantly reduced or even lead to an award in your favour that is over and above the scaled costs.
The decision indicated that although such a mark was capable of being registered as a trade mark, in this case the application was not filed in an appropriate manner, which emphasises the importance of taking care when applying for trade marks and using qualified trade mark lawyers (attorneys or solicitors) to assist.
It should be noted that as of October 2017, the requirement that a mark be capable of graphic representation has been removed (not least to assist with applications for non-traditional marks such as sounds and smells) but applications still need to be clear, precise, self-contained, easily accessible, intelligible, durable and objective. Accordingly, even though the old regime applied as this mark was filed on 12th March 1996, it is likely that the mark would have been found invalid under the new rules for the same reasons.
If you have any trade mark issues and would like some expert advice, please contact a member of our Intellectual Property team.
