The Court of Appeal for England and Wales has recently ruled on the need for clear and precise descriptions for unusual trade marks to be registrable in two separate cases. The cases concerned Cadbury’s trade mark registration for the colour purple (in Société Des Produits Nestlé S.A. v Cadbury UK Ltd  EWCA Civ 1174) and Mattel’s trade mark registration for a Scrabble tile (in JW Spear & Son Ltd, Mattel Inc and Mattel UK Ltd v Zynga Inc  EWCA Civ 1175). In invalidating both registrations, the Court of Appeal reinforced that descriptions for unusual trade marks must be clear and precise in order for such marks to be registrable.
Cadbury and Mattel had both launched proceedings against the other parties on the basis of infringement of their unusual trade marks. The defendants retaliated by counter-claiming that the unusual trade marks in question were invalidly registered. The defendants claimed that the descriptions used for Cadbury and Mattel’s respective trade mark registrations did not comply with Article 2 of the EU Trade Marks Directive 2008/95, because the signs in question are incapable of graphic representation and so should not have been registered. The defendants referred to case law of the Court of Justice of the European Union on the point, which states that the representation of the sign must be clear, precise, self-contained, easily-accessible, intelligible, durable and objective (the so-called Sieckmann criteria) so as to allow other parties to understand exactly what is protected by the registration. The defendants alleged that neither the description used for Cadbury’s purple sign, nor that for Mattel’s Scrabble tile sign met all of these criteria. The Court of Appeal ultimately agreed and cancelled both registrations. Unfortunately, filing evidence of acquired distinctiveness (which both Cadbury and Mattel did) does nothing to combat an objection on the basis that the mark is not capable of graphic representation.
For Cadbury’s purple sign, the description used for the trade mark registration was: “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”. The issues with this description centred around the “or being the predominant colour…” portion. The Court of Appeal essentially held that determining what colour is “predominant” can be subjective or confusing, whilst the alternative options presented by the use of “or” meant that the description was imprecise too. The description permitted a multitude of signs with different permutations, presentations and combinations to fall within is parameters and so failed the requirement for the registration to be for a singular sign. Hence the registration was held to be invalid.
As for Mattel’s Scrabble tile sign, the registration was three images of a blank tile accompanied with the following description: “The mark consists of 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”. Even the most cursory of examinations of this description appears to raise a number of issues with regards its degree of precision: what precise “ivory” colour is not specified; the precise dimensions of the tile are not indicated; the size of the letters and numerals, and their position on the tile are not detailed; and the font used for the letters and numerals is not designated either. These and other factors appeared to give the Court of Appeal little choice but to deem that the description covered too many variations and so was not sufficiently precise, and so Mattel’s registration was also held to be invalid.
The ‘take home’ message from the Court of Appeal’s judgements is that descriptions used in support of applications for unusual kinds of trade marks must be carefully drafted so as to be definite and clearly understood, in accordance with the various legal precedents that cover the issue at hand. Failure to adhere to these requirements seems likely to result in applications being refused by the trade mark office, or (perhaps worse still) being declared invalid at the point when the owner needs to rely upon them.