Societe des Produits Nestle SA v Cadbury UK Ltd [2022] EWHC 1671 (Ch) (05 July 2022)

Societe des Produits Nestle SA v Cadbury UK Ltd [2022] EWHC 1671 (Ch) (05 July 2022)

The 'Libertel form' mark ('822'), being a single colour per se defined by Pantone code, is conceptually a single sign and does not suffer from ambiguity or multitude of forms; it is capable of being a sign under s.1(1) TMA 1994. In contrast, the '361' mark, which refers to the colour applied to packaging without specifying extent or manner, is ambiguous, allows for a multitude of forms, and fails the requirements of clarity, precision, and specificity, thus is not registrable as a sign.

Citation
[2022] EWHC 1671 (Ch)
Parties
Opponent/respondent: Société des Produits Nestlé S. A.; Applicant/appellant: Cadbury UK Limited; Intervener: The Comptroller-General of Patents, Designs and Trade Marks
Jurisdiction
England and Wales
Judgment Date
05 July 2022
Procedural Posture
Trade Mark Opposition Appeal / High Court Appeal From Hearing Officer Decision
Outcome
Appeal allowed in part; '822' mark appeal succeeds, '361' mark appeal fails.
Legal Topics
Colour Marks, Graphical Representation, Sign Requirement, Trade Marks Act 1994 S.1(1) and S.3(1)(a), Distinctiveness
Intellectual Property Trade Marks Colour Marks Graphical Representation Sign Requirement Trade Marks Act 1994 S.1(1) and S.3(1)(a) Distinctiveness

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Parties

Société des Produits Nestlé S. A.

Opponent/respondent

Cadbury UK Limited

Applicant/appellant

The Comptroller-General of Patents, Designs and Trade Marks

Intervener

Procedural Posture

Trade Mark Opposition Appeal / High Court Appeal From Hearing Officer Decision

Legal Issues

  1. 1 Whether a colour per se mark (Libertel form) is capable of being a 'sign' under s.1(1) TMA 1994
  2. 2 Whether a colour mark applied to packaging without specificity ('361') meets the requirements for registration as a sign

Ratio Decidendi

The 'Libertel form' mark ('822'), being a single colour per se defined by Pantone code, is conceptually a single sign and does not suffer from ambiguity or multitude of forms; it is capable of being a sign under s.1(1) TMA 1994. In contrast, the '361' mark, which refers to the colour applied to packaging without specifying extent or manner, is ambiguous, allows for a multitude of forms, and fails the requirements of clarity, precision, and specificity, thus is not registrable as a sign.

Court Disposition

Appeal allowed in part; '822' mark appeal succeeds, '361' mark appeal fails.

Orders

  • '822' mark (colour per se) is registrable as a sign under s.1(1) TMA 1994.
  • '361' mark (colour applied to packaging without specificity) is not registrable as a sign.