19 Nov Scrabble tile and Cadbury’s colour purple trade marks invalidated
Two recent cases, in which the registration of established and familiar trade marks have been challenged and lost, have highlighted the need for extremely clear and precise descriptions when registering unusual trade marks.
In both cases, the owner of the trade mark launched proceedings for trade mark infringement only for the defendants to be successful in their counterclaims that the mark in question had been invalidly registered. As a result, Cadbury’s has lost its registration of its trade mark shade of purple and Mattel has lost its registration of the scrabble tile.
Under Article 2 of the EU Trade Marks Directive 2008/95, “a trade mark may consist of signs capable of being represented graphically”, and the defendants in both cases argued successfully that the relevant trade mark was not capable of graphic representation. Looking to the guidelines regarding registration of unusual trademarks contained in the Sieckmann criteria (drawn from a case before the ECJ concerning the registration of a perfume as a trade mark), the defendants argued that the sign must be clear, precise, self-contained, accessible, intelligible, durable and objective in order to clearly communicate what is protected by the registration.
The description of the Cadbury’s registered trade mark purple sign read as follows: ” 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 Court of Appeal considered that this description had failed to meet at least two of the Sieckmann criteria: (a) it would be subjective and confusing to determine which was the predominant colour and (b) the word “or” suggested alternative possibilities. Therefore the description was imprecise, could thus have covered a number of different signs and so the registration was invalid.
The wording of Mattel’s scrabble tile registration described it thus: “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”. This too fell foul of the Sieckmann criteria, on the basis that neither the colour ivory, nor the precise dimensions of the tile, size, font or position of the letters and numerals were specified with sufficient clarity or precision.
The Court of Appeal refused to take into account proof that both trade marks had acquired distinctiveness with use and should be preserved on that basis.
The conclusion to be drawn from these cases is that future applications for unusual trade marks must be worded with extreme care and specificity. In order that an unusual trade mark be deemed capable of graphic representation, its description must be specific, clear and precise and must convey an easily understood message about the source of the goods or services. If the description of the sign could cover multiple signs (rather than one sign) with different permutations, then there could be too much lack of certainty.