Cheesy - Fromagerie Bel SA v J Sainsbury Plc

Jane Lambert

It is possible for a mark to remain on the register for over 20 years, Then, suddenly, someone challenges the registration on a ground that nobody envisaged at the time of filing.

Essentially that is what happened to the owner of the above three-dimensional trade mark  It applied to register a chunk of cheese as a UK trade mark on 12 March 1996.  The application was successful and registration was granted on 29 Aug 1997.

There the mark remained undisturbed until 26 Oct 2017 when the retailer, J Sainsbury Plc, applied to the Registrar of Trade Marks for a declaration that the registration was invalid pursuant to s.47 (1) of The Trade Marks Act 1994.  That subsection provides:

"The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration)."

The original grounds for invalidation were that the trade mark does not comply with the requirements of: 

"(i) Section 3 (1) (a) of the Act because the mark consists of the goods themselves in an unadorned red wax/plastic wrapper which is customary in the trade.
(ii) Section 3 (1) (b) because the mark consists exclusively of the shape of the goods themselves and is devoid of any distinctive character.
(iii) Section 3 (1) (b) because the trade mark is not graphically represented, as required.
(iv) Section 3 (1) (c) because

a) it is customary to preserve cheese in wax/plastic wrapping,
(b) certain Dutch cheeses are particularly associated with this type of wrapping
(c) the dimensions used in the representation of the mark indicate the amount of cheese in the product; therefore, the mark designates the kind, quality, quantity and/or geographical origin of the goods.

(v) Section 3 (1) (d) because the trade mark consists exclusively of a sign which has become customary in the current language or in the bona fide and established practices of the trade.
(vi) Section 3 (2) (a) because the trade mark consists exclusively of a shape which results from the nature of the goods themselves.
(vii) Section 3 (2) (b) because the trade mark consists exclusively of a shape which is necessary to achieve a technical result.
(viii) Section 3 (2) (c) because the trade mark consists exclusively of a shape which gives substantial value to the goods."

The application came on before Mr Allan James who heard the application on behalf of the Registrar.  Most of those objections failed. Just one succeeded.  Mr James was so unimpressed that he said:

"In my view, the way that the applicant has pleaded and pursued its application amounts to unreasonable behaviour. It has wasted a great deal of everyone’s time, including that of the proprietor, which has incurred wasted costs as a result. Taking this into account, I order Fromageries Bel S.A. to pay J Sainsbury plc the sum of £200, being the official filing fee for the application for invalidation. In the circumstances, it would, in my view, be unjust to require the proprietor to pay the applicant any more than that."

The ground upon which the retailer was successful was that there was an ambiguity in the description of the mark.  The above photo was accompanied by the words:

"The mark is limited to the colour red. The mark consists of a three dimensional shape and is limited to the dimensions shown above."

Me James held that that 'the colour red' in the description did not provide sufficient clarity and precision because a particular hue of red should have been specified.  As a result of the ambiguity, the mark did not satisfy the requirements of s.1 (1) of the Act and could therefore not be registered without breaching s.3 (1).

Fromageries Bek SA appealed to the High Court.  The case was heard by His Honour Judge Hacon who dismissed the appeal in Fromageries Bel SA v J Sainsbury Plc [2019] EWHC 3454 (Ch) (12 Dec 2019). For those who are interested, I wrote a commentary on the case in Fromageries Bel SA v J Sainsbury Plc 16 Dec 2019 NIPC Law. 

The whole judgment is worth reading but perhaps the most important passages are as follows.   At paragraph [63] Judge Hacon said:

"Turning to marks containing colour which are not colour per se marks, it is of course the entire mark, including non-colour elements, which must be capable of distinguishing. However, the colour element may play a part in ensuring that it is and that in turn may depend on the colour being of a particular hue."

At paragraph [67] he added:

"It seems to me that where a mark contains colour but is not a colour per se mark, the need for precision as to hue will depend on the extent to which other elements of the mark serve to make the mark capable of distinguishing. More exactly, it will depend on the extent to which the colour of the relevant feature of the mark contributes to making the mark capable of distinguishing and whether it is likely that only a particular hue will confer on the mark that capacity to distinguish. It will always be a question of fact and degree."

In the case of Fromageries Bel SA's mark, the judge asked himself whether it was capable of distinguishing that company's cheese from the cheese of all other undertakings on the assumption that the hue used in the wax coating may be any hue of red which the company cares to use and indeed which it is free to vary from time to time. He reached the conclusion on the balance of probabilities that the mark could be capable of distinguishing only if a particular hue of red used on the main body of the product is associated with the cheese. It followed that the trade mark had to be limited to a single hue of red to be valid.

The other important takeaway from this case concerns s.13 (1) of the Trade Marks Act 1994:

"An applicant for registration of a trade mark, or the proprietor of a registered trade mark, may;

(a) disclaim any right to the exclusive use of any specified element of the trade mark, or
(b) agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation; 

and where the registration of a trade mark is subject to a disclaimer or limitation, the rights conferred by section 9 (rights conferred by registered trade mark) are restricted accordingly."

Fromageries Bel SA tried to rely on this provision to substitute a hue or Pantone for the word "red" in the above description.  Judge Hacon said that this section could be used to limit the scope of a valid registration but not to correct a defect in an invalid one,

Anyone wishing to discuss this article or trade marks generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Auntie Jane's Trade Mark Tips: No 8 - Oppositions in the Trade Mark Registry

Intellectual Property Office in Newport

Jane Lambert

In my last trade mark tip, I talked about publication and some of the consequences. In most cases, there are no consequences at all. Your application is published in the Trade Marks Journal and nobody bats an eyelid. If there are no objections the application proceeds to registration as the infographic indicates. But sometimes the Intellectual Property Office receives third party observations which the examiner considers and or even an opposition.

An "opposition" is an application to the Intellectual Property Office to stop the registration of the sign that you want to register as a trade mark. It can be made on any or all of the absolute grounds for refusal mentioned in my sixth trade mark tip and/or the grounds that the objector has an earlier trade mark or an earlier right under s.5 of the Trade Marks Act 1994. An "earlier trade mark" is a trade mark that has been registered for the UK or the EU, an international mark, an application for any of those marks, or a mark that is protected as a well-known mark under the Paris Convention. An "earlier right" is the right to bring an action for passing off, copyright or any other IP right infringement or some other claim that would prevent your using the trade mark. These are known as "relative grounds for refusal".

Your first inkling that you may have a problem could be a letter from the patent or trade mark attorneys or solicitors for the objector setting out the objection and the reasons for it and inviting you to withdraw your trade mark application.  Sometimes it is accompanied by a form TM7A or notice of threatened opposition. This is one of the times when you may need legal advice either from a barrister or solicitor specializing in IP law or a trade mark or patent attorney.

If you decide to proceed with your application, the objector may issue opposition proceedings which he or she does by filling in a form TM7 or a TM7F. The objector (who has now become an "opponent") will fill in a TM7F if he or she wants a fast track opposition. Fast track proceedings are available where the opposition is based on s.5 (1) or (2) of the Trade Marks Act 1994 and the application to register the earlier mark was made less than 5 years ago. The main advantage is that costs awards are limited to £500 but the disadvantage is that there is not usually a hearing. In all other cases, opposition proceedings are to be launched with a form TM7.  If you want to defend your application you must file a notice of defence and counterstatement in form TM8 within 2 months of the service of form TM7.

I described what happens next in some detail in Oppositions in the IPO's Trade Marks Registry on 12 Aug 2015 in NIPC London. Basically, the case goes before a hearing officer who may give a preliminary indication as to how he thinks the case will go. If the case proceeds, the hearing officer will direct the parties to file evidence. If you are unable to resolve your dispute opposition through direct negotiation or perhaps mediation the hearing officer may decide the case on the written materials only or order a hearing if you or the opponent so wishes. That will usually take place at the Intellectual Property Office in Newport with one or both of the parties sitting in London or occasionally elsewhere. It tends to follow the usual course of civil proceedings with the opponent opening and closing and the applicant responding. Judgment is usually reserved for several weeks and is delivered in writing. An unsuccessful party may appeal either to a tribunal within the IPO known as "the appointed person" or to the Chancery Division of the High Court.

If the opposition fails either before the hearing officer or on appeal the trade mark application to register the trade mark proceeds to grant. If it succeeds the application is stopped in its tracks.

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.