Last week was a bad week for pictorial trade marks, as the English Court of Appeal decided that neither Cadbury's famous shade of dark purple, nor Mattel's Scrabble® tiles, were valid trade marks. Neither mark was described with sufficient clarity or precision to be registrable.
Cadbury: its purple colour – not wrapped up!
Cadbury® had originally applied to register its famous dark shade of purple for all chocolate goods. Last year, the High Court had restricted this to "milk chocolate" and "drinking chocolate", on the basis that the Cadbury's purple trade mark was only distinctive for those types of chocolate. The Court of Appeal has now held that the trade mark should not be allowed for any goods, on the basis that the description of the trade mark was not sufficiently clear to delineate its ambit precisely.
Cadbury's description read: "The colour purple (Pantone 2685C) …. applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods." The application also provided a sample of the purple colour.
The offending word was "predominant" as it introduced ambiguity by suggesting that, in addition to purple, other colours may be used in the trade mark - but gave no indication of in what quantities.
Mattel: game over for its tile trade mark …?
Mattel sought to register the Scrabble tile for, amongst other terms, "board games". The mark was described as "a three dimensional ivory-coloured tile on the top surface of which is …a letter ... of the Roman alphabet and a numeral in the range 1 to 10". This description was simply too vague – it could cover an infinite number of different permutations of how the letter and number might appear on the tile, including the precise letter and number combinations used, the size and type of their font, and their positioning on the tile.
These decisions make it clear that, in order for a colour or 3D trade mark to be valid, the mark must be described with sufficient precision so that anyone reading the trade mark Register can tell precisely how the protected mark will appear.
Cadbury is now likely to file a new application, in which it would be made clear exactly how "predominant" its shade of purple will be on chocolate packaging. Mattel's task is more difficult: it may try to register a number of specific Scrabble tiles as separate trade marks; alternatively, it may decide to be content with its existing trade mark registrations depicting Scrabble tiles with letter/number combinations "A1" and "S1".