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.

The Trade Marks Regulations 2918 - Registrable Signs

Jane Lambert

This is the second of my articles on the new trade marks law. It should be read in conjunction with my introduction and overview which I published in NIPC Law on Saturday.  Readers will recall that Directive 2015/2436 repeals Directive 2008/95/EC with effect from 15 Jan 2019 and requires member states to transpose the most important provisions of Directive 2015/2436 into their laws by the 14 Jan 2019. The statutory instrument that implements Directive 2015/2436 is the Trade Marks Regulations 2018 (SI 2018 No 825.

One of the most important changes to have been brought about by the Directive is the widening of the range of signs that can be registered as trade marks.  Art 2 of Directive 2009/95/EC provided:

"A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."

This definition was transposed into s.1 (1) of the Trade Marks Act 1994:

"In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."

The words "capable of being represented graphically" excluded marks that could not be described by letters, numbers or any other form of notation.

Art 3 of Directive 2015/2436 offers the following definition in place of the previous one:

"A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
(a)  distinguishing the goods or services of one undertaking from those of other undertakings; and
(b)  being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor."

Accordingly, reg 3 of the Trade Marks Regulations 2018 provides:

"In section 1, for subsection (1) substitute— 

'(1) In this Act “trade mark” means any sign which is capable— 

(a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and

(b) of distinguishing goods or services of one undertaking from those of other undertakings. 

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.'”

The substitution has required a consequential amendment of s.32.  Reg 18 inserts the following words after "mark" in subsection  2 (d): "which is capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor”.

In its guidance Implementation of the EU Trade Mark Directive 2015 the Intellectual Property Office explains:

"When filing your application, you will no longer be required to always provide a graphic (visual) representation of your trade mark. You can instead present your mark in a wider range of electronic formats, such as in an MP3 or MP4 format. This makes it easier to show more precisely any marks which incorporate, for example, movement or sounds. You will need to ensure that your mark is presented clearly and precisely so that others can understand what it is."

An applicant that wishes to register such a mark must do so online.  The mark may be in one of the following formats:

• Shapes: OBJ, STL and X3D
• Figurative, pattern, colour: JPEG
• Sound: MP3
• Motion, multi-media and hologram: MP4

The note adds the file should be no more than 20 megabytes (MB) in total, per application.  In the case of an application for a trade mark that relates to sound, moving images, hologram or a multimedia trade mark, the MP3 file cannot exceed 2 MB and the MP4 may not exceed 8000 kilobytes per second.

Anyone wishing to discuss this article or the Trade Marks Regulations 2018 generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.