England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
ON APPEAL FROM
THE REGISTRAR OF TRADE MARKS
Decision No O-281-15

		Royal Courts of Justice, Rolls Building Fetter Lane, London, EC4A 1NL
		18 April 2016

 

1. This is an appeal against the decision of Hearing Officer, Edward Smith for the Registrar of Trade Marks, whereby he refused a request made by Cadbury UK Ltd, to delete a mark from a series of trade marks, as permitted by section 41 of the Trade Marks Act and the rules made thereunder. The request was made pursuant to rule 28(5) of the Trade Mark Rules 2008 and the mark in question is number 2020876A ('876'), registered as of 19 May 1995, and it appears on the register as:



together with the following description:

The mark consists of the colour purple 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 mark consists of 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.

It is not clear why the description is repetitive and no-one had an explanation for or appeared to be concerned about this.

2. Nestlé has applied for and been given permission to intervene on this appeal and I am grateful for its submissions.
3. Cadbury's request was made following a Court of Appeal decision, Société Des Produits Nestlé S.A v Cadbury UK Ltd [2013] EWCA Civ 1174, in relation to a mark with the same description but a different number (namely 2376879 ('879')). That decision concerned a successful opposition by Nestlé to an application for registration under this different number, being another attempt by Cadbury to seek trade mark rights in connection with the colour purple and its business in chocolate. The issue with which the Court of Appeal were concerned was whether the description of the mark in the application satisfied two of the requirements of section 3(1)(a) of the Act, namely that it be 'a sign' and that it be 'capable of graphical representation'.
4. The gist of the Court of Appeal's decision was that a mark with a description which is the same as that of the mark in suit is not suitable for registration as a trade mark. The matter was explained by Sir John Mummery at [55]:

55 In brief, the description of the mark as including not just the colour purple as a sign, but other signs, in which the colour purple predominates over other colours and other matter, means that the mark described is not "a sign." There is wrapped up in the verbal description of the mark an unknown number of signs. That does not satisfy the requirement of "a sign" within the meaning of Article 2^[1], as interpreted in the rulings of the CJEU, nor does it satisfy the requirement of the graphic representation of "a sign", because the unknown number of signs means that the representation is not of "a sign." The mark applied for thus lacks the required clarity, precision, self-containment, durability and objectivity to qualify for registration.

5. Cadbury was concerned that this reasoning applies to the 876 mark just as much as it does to the 879 mark and accordingly that the 876 mark is potentially vulnerable to an invalidity attack. It seeks to head off such an attack by deleting the expression ", or being the predominant colour applied to the whole visible surface," from the description of the mark, thereby limiting the mark to a sign consisting of the colour purple applied to the whole visible surface of the packaging of the goods.
6. Cadbury's scheme for achieving this result is to contend that the description of the mark as registered is in fact a description of two marks, one of which consists of the colour purple applied to the whole visible surface of the packaging and the other of which consists of the colour purple being the predominant colour applied to the whole visible surface of the packaging, that these two marks are series marks, and that the second of the two marks can be deleted pursuant to section 41 of the Act, thereby leaving a single mark which is validly registered (following Libertel Case C-104/01, [2004] FSR 4).
7. The relevant parts of section 41 of the Act are:

41. - (1) Provision may be made by rules as to-

(a) the division of an application for the registration of a trade mark into several applications;

(b) the merging of separate applications or registrations;

(c) the registration of a series of trade marks.

(2) A series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.

(3) Rules under this section may include provision as to-

(a) the circumstances in which, and conditions subject to which, division, merger or registration of a series is permitted, and

(b) the purposes for which an application to which the rules apply is to be treated as a single application and those for which it is to be treated as a number of separate applications.

The relevant rule^[2], taken from The Trade Marks Rules 2008 (as amended) ('the Rules'), reads as follows:

Registration of a series of trade marks; section 41 (Form TM12)

28.- (1) An application may be made in accordance with rule 5 for the registration of a series of trade marks in a single registration provided that the series comprises of no more than six trade marks.

(1A) Where an application for registration of a series of trade marks comprises three or more trade marks, the application shall be subject to the payment of the prescribed fee for each trade mark in excess of two trade marks.

(2) Following an application under paragraph (1) the registrar shall, if satisfied that the marks constitute a series, accept the application.

...

(5) At any time the applicant for registration of a series of trade marks or the proprietor of a registered series of trade marks may request the deletion of a mark in that series and, following such request, the registrar shall delete the mark accordingly.

(6) Where under paragraph (5) the registrar deletes a trade mark from an application for registration, the application, in so far as it relates to the deleted mark, shall be treated as withdrawn.

and rule 5, as referred to in rule 28(1), in so far as is relevant is:

Application for registration; section 32 (Form TM3)

5.- (1) An application for the registration of a trade mark (other than a transformation application, which shall be filed on Form TM4) shall be filed on Form TM3 or, where the application is filed in electronic form using the filing system provided on the Office website, on Form e-TM3.

(1A) Where an application is filed on Form TM3 (a 'standard application') the application shall be subject to the payment of the standard application fee and such class and series fees as may be appropriate.

The relevant rule when 876 was applied for is in these terms^[3]:

21.-

(1) The proprietor of a series of trade marks may apply to the registrar on Form TM3 for their registration as a series in a single registration and there shall be included in such application a representation of each mark claimed to be in the series; and the registrar shall, if satisfied that the marks constitute a series, accept the application.

(2) At any time before preparations of publication of the application have been completed by the Office, the applicant under paragraph (1) above may request on Form TM12 the division of the application into separate applications in respect of one or more marks in that series and the registrar shall, if he is satisfied that the division requested conforms with section 41(2), divide the application accordingly.

(3) At any time the applicant for registration of a series of trade marks or the proprietor of a registered series of trade marks may request the deletion of a mark in that series, and the registrar shall delete the mark accordingly.

(4) The division of an application into one or more applications under paragraph (2) above shall be subject to the payment of a divisional fee and such application and class fees as are appropriate.

8. The Hearing Officer refused Cadbury's request for three reasons and he made the preliminary comment ([12] of the Decision) that the Court of Appeal judgment could not be read as concluding that the verbal description of the mark was, in effect, a description of two marks. The first reason for refusal that he gave ([13] to [17] of the Decision) was that the trade mark was not applied for as a series trade mark and since there had been no request by the proprietor for registration as a series trade mark then the request for deletion of one of the series could not be entertained.
9. The second reason was that, following the decision of the Court of Appeal, the words sought to be deleted do not actually describe a mark and, accordingly, there is no mark to be deleted ([18] to [25] of the Decision) pursuant to the provisions for deleting series marks.
10. The third reason was that the deletion requested would involve an alteration of the mark contrary to section 44 of the Act ([26] to [39] of the Decision). This section is in these terms:

44. - (1) A registered trade mark shall not be altered in the register, during the period of registration or on renewal.

(2) Nevertheless, the registrar may, at the request of the proprietor, allow the alteration of a registered trade mark where the mark includes the proprietor's name or address and the alteration is limited to alteration of that name or address and does not substantially affect the identity of the mark.

(3) Provision shall be made by rules for the publication of any such alteration and the making of objections by any person claiming to be affected by it.

11. It was common ground that this appeal takes place by way of review rather than rehearing and that, since the Hearing Officer sits in a specialist tribunal, the appellate court should show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle.
12. It was also common ground that the issue on the appeal was one of principle rather than otherwise.
13. Mr Purvis QC, for Cadbury, submitted that the Hearing Officer made a material error of principle in that he did not recognise that the 876 mark is a series mark, comprising two marks, and, that, once his error is appreciated, the appeal must inevitably be allowed.
14. Mr Purvis based his submissions, and in particular his contention that the description of the 876 mark was a description of two alternative marks, on the following passages in Sir John Mummery's judgment, particularly [50]:

50 The crucial point stems from the misinterpretation of the verbal description of the graphic representation of the mark for which application is made. The description refers not only to the colour purple as applied to the whole visible surface of the packaging of the goods, but also to an alternative i.e. "or being the predominant colour applied to the whole visible surface … " The use of the word "predominant" opens the door to a multitude of different visual forms as a result of its implied reference to other colours and other visual material not displayed or described in the application and over which the colour purple may predominate. It is an application for the registration of a shade of colour "plus" other material, not of just of an unchanging application of a single colour, as in Libertel.

51 In my judgment, that description, properly interpreted, does not constitute "a sign" that is "graphically represented" within Article 2. If the colour purple is less than total, as would be the case if the colour is only "predominant", the application would cover other matter in combination with the colour, but not graphically represented or verbally described in the specific, certain, self-contained and precise manner required. The result would not be an application to register "a sign", in the accepted sense of a single sign conveying a message, but to register multiple signs with different permutations, presentations and appearances, which are neither graphically represented nor described with any certainty or precision, or at all.

52 The appearance and number of such other signs would be unknown both to the Registrar, who is responsible for the proper functioning of the registration system and is faced with the decision whether or not to register it on a public register, and to competitors, who would not be able to tell from inspecting the register the full scope and extent of the registration. To allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. It would also offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage.

Mr Purvis submitted that these passages contain a clear finding of two alternative marks. He contended that what his client was requesting was the deletion of the second mark, i.e. the one which the Court of Appeal had held to be invalid, and that there should be nothing objectionable in that.

15. First, however, he reminded me of how the mark came to be in the form that appears on the register. The application for 876 was filed with a swatch of Cadbury purple and the description of the mark was given as "The mark consists of the colour purple". There was an initial objection based on lack of distinctiveness which was eventually overcome. Then the Registrar was concerned with the description of the mark and, following a formal request by Cadbury to clarify that description by a proposed form of words, on 9 September 1997 the Registry responded with a suggestion that the mark be amended to "The mark consists of the colour purple, 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.".
16. Cadbury was concerned about the Registry's proposal of use of the word 'predominant', (it considered 'prominent' was better) and asked for the matter to be considered at a hearing which took place on 19 May 1998. Apparently the Registry was unmoved by Cadbury's submissions and on 22 May 1998 it formally notified Cadbury that the mark could be amended to the form in which it now appears. The application was then divided into A and B applications (for reasons which do not matter) and the A application proceeded to grant on 13 November 1998.
17. Mr Purvis turned to the Court of Appeal decision in the 879 case and submitted that its effect was that the Registry-recommended wording of the 876 mark comprised a description of two marks in the alternative, one objectionable and one not. He accepted that this was an unusual situation but submitted it was permissible as a matter of law in the case of series marks. He submitted that the 876 registration, when properly construed, was in respect of a series of two marks which differed only as to matters of a non-distinctive character not substantially affecting the identity of the mark. It was in order to clear the Register of the objectionable mark that Cadbury had made the request pursuant to Rule 28(3).
18. Mr Purvis dismissed the Hearing Officer's preliminary observation that the Court of Appeal decision did not conclude that the mark comprised two alternative definitions of a mark by what he submitted was a fundamental point – that alternative descriptions must by necessary implication mean alternative marks since each of the descriptions is of a graphic representation, i.e. a sign under section 1 of the Act, and since there are two alternatives, there must be two marks.
19. Moreover, Mr Purvis pointed out that the hearing before the Court of Appeal had focussed on the duality of the language of the description – on the one hand there is a mark which consists of the colour purple applied to the whole visible surface of the packaging of the goods and on the other hand there is a mark where purple is the predominant colour applied to the whole visible surface of the goods. He submitted that the description clearly covers two marks and that, since the Court of Appeal had found that the second mark was insufficiently precise and, therefore not suitable for registration, it was appropriate to consider the pair as a series of marks and delete the invalid mark.
20. Mr Purvis went on to submit that his analysis would be equally apposite if the description of the second of the two marks (i.e. the 'predominant' one) was in fact a class of marks, since the class was insufficiently defined and it was appropriate to delete the whole class. He submitted that policy demanded this be the correct solution since there was no prejudice to the public, Cadbury was merely seeking to cut down the scope of its registration rather than altering it in any way.
21. Mr Purvis also pointed out that at the date of application for registration there was no limit upon the number of marks which might comprise a series^[4], so that it did not matter how many marks were embraced by the class description; what matters, he submitted, was that the invalid ones should be removed.
22. When it was pointed out to Mr Purvis that series marks must be marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark (see section 41(2) of the Act) and that it is likely that some of the marks within the 'predominant' class did not share this characteristic, his response was that this did not matter; that if it were so then it was all the better that they be deleted as they should not have been there in the first place. He submitted that the argument should be on substance rather than form, that what his client was seeking was a logical and coherent approach to the way the Court of Appeal had interpreted the description of the 879 mark as applied to the 876 mark.
23. Mr Purvis also relied on section 45 of the Act but I did not understand how that section could help him since it is concerned with surrender by the proprietor of a registered trade mark in respect of some or all of the goods or services for which it is registered. Cadbury has not sought to surrender anything in these proceedings; it has made a request to delete one of a series of marks.
24. Mr Saunders, counsel for the Registrar, submitted that matters were not so simple and straightforward as contended for by Mr Purvis. First he reminded me of the obligations upon the Registry to examine marks properly, as articulated by the CJEU in, for example, Libertel (Case C-104/01 at [59]):

.... the large number and detailed nature of the obstacles to registration set out in Arts 2 and 3 of the Directive, and the wide range of remedies available in the event of refusal, indicate that the examination carried out at the time of the application for registration must not be a minimal one. It must be a stringent and full examination, in order to prevent trade marks from being improperly registered. As the Court has already held, for reasons of legal certainty and good administration, it is necessary to ensure that trade marks whose use could successfully be challenged before the courts are not registered (Case C-39/97 Canon [1998] ECR I-5507 , para.[21]).

25. He then pointed out that the relevant TM3^[5] required the applicant to state whether the application was for a series of marks and that if it was, it would only proceed to registration if the Registrar were satisfied that the marks constitute a series (see rule 21 above). That, submitted Mr Saunders, was an important safeguard protecting the public from the inappropriate registration of series marks. He pointed out that Mr Purvis' scheme for by-passing these safeguards could not be legitimate since they defeated the provisions of the Act which had been specifically put in place, inter alia, to guard against the vice inherent in the 876 registration. He said it was no answer for Cadbury to say it did not realise that the 876 mark was a series mark when the application for registration was made.
26. Mr Saunders also drew my attention to the very limited scope to amend applications for registration pre-grant (section 39 of the Act) and the even more limited scope for amendment (alteration) of a registered mark (section 44 of the Act). He argued that Mr Purvis' scheme of pretending that marks were series marks in order to delete parts of the description therefrom under rule 28(5) would defeat these other statutory protections as well.
27. Mr Saunders submitted that the provisions in the rules permitting deletion of one or more marks in a series only applied to those marks which had been properly considered by the Registrar to have satisfied the section 41(2) criteria. He submitted that this was the only approach which was consistent with the guidance from the CJEU expressed in Libertel; the only approach consistent with the statutory framework when considered as a whole.
28. Mr Malynicz QC, for Nestlé, supported Mr Saunders' submissions. He said that his client had intervened in this appeal since Cadbury had once sued it under the 876 mark, and that after the Court of Appeal judgment Nestlé had written to Cadbury asking it to surrender the mark. He reminded me that Nestlé in the Court of Appeal had referred to the duality of the registration as two expressions of a single mark (and not as one expression of two marks, as Mr Purvis was now contending) and that there had been no real argument at all in the Court of Appeal addressed to whether the description was of a series of marks.
29. In my judgment the answer to the question under consideration depends upon whether the 876 registration is for a series of marks (as permitted by section 41 of the Act) or not. If it is not then no question of deleting some of the marks in the series arises. If it is, then the matter needs to be considered in accordance with the Rules with respect to each mark sought to be deleted.
30. In my judgment the answer is clear from Sir John Mummery's brief summary of the position in [55] of his judgment set out at paragraph 4 above. In that passage Sir John is referring to the description of the mark as a whole. He is not saying that there are two marks, one of which is acceptable as a sign and one of which is not. Nor is he saying that there is one mark and a class of marks (being the 'predominant' ones), the former of which is acceptable and the latter of which is not. I interpret him as saying that the description of the 876 registration is of an unknown number of signs including not just the colour purple but others in which the colour purple predominates. I do not think he is coming close to suggesting that the description is of two marks or of a series of marks as that expression is used in the Trade Marks Act.
31. It follows that I reject Mr Purvis's primary submission that the 'alternative' description (using the language of §50 of Sir John's judgment) is of a single mark (being one of two). It is not. The 'alternative' description encompasses a large but unknown number of signs with only one characteristic in common – purple is the predominant colour applied to the whole visible surface of the packaging (assuming that some of what is embraced by these words are in fact signs within the law of trade marks).
32. Moreover this single common characteristic is, to my mind, patently insufficient to satisfy the criteria in section 41 for series trade marks. Thus purple may, in any particular sign, be the predominant colour in terms of area, but there might be yellow or green spots as well and it might be that these contribute to the sign's distinctive character. This may not be what Cadbury intended on its application (who knows?) but, as is clear from Sir John's judgment (see especially [51] and [52]), the description covers such signs. The consequence is that the description of the 876 mark covers a number of marks which are not part of any series.
33. Moreover, I reject Mr Purvis's submission that the deletion provisions of rule 28 may be brought into play whether or not the mark(s) sought to be deleted are one or more of a series of marks. Section 41(2) of the Act contains clear safeguards and no sufficient reason has been given for them to be ignored. I accept Mr Saunders' submission that section 41 provides the gateway to the rules relating to series marks. It is but one part of the statutory system which has been put in place to ensure that, as far as practical, the only marks which get on to the register are those which have a right to be there.
34. Accordingly, in my judgment the scheme devised by Mr Purvis and set out in paragraph 6 above is fundamentally flawed in that the 876 mark is not a series mark, the description is not of two marks or of a series of marks, there are no identifiable members of any series which might be the subject of a request for deletion, accordingly any request for such a deletion cannot be entertained and the appeal must be dismissed.
35. Regarding the three substantive reasons given by the Hearing Officer for his Decision, these seem to me to follow from his comment in paragraph 12 of the Decision that the 876 registration is not a series registration. Counsel commented that some of the reasoning was a bit existential, but, if so, that is, perhaps a consequence of the submissions which were made. I do not think he can be criticised. The appeal is dismissed.

Note 1   Article 2 (which coincides with section 1(1) of the Act) Signs of which a trade mark may consist 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 their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.    [Back]

Note 2   being the one in force at the time of the request for a deletion    [Back]

Note 3   Trade Mark Rules 1994    [Back]

Note 4   under the present rules, there is a limit of six    [Back]

Note 5   the application form for registration of a trade mark    [Back]