The Court of Appeal has dismissed an appeal against a High Court decision that a trade mark for the colour purple for packaging was not a series mark.
The trade mark consisted of the colour purple 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."
The proprietor of the trade mark, Cadbury, argued that the mark consisted of a series of two marks. The two marks encompassed by the registration were said to be (a) the colour purple applied to the whole visible surface of the packaging of the goods; and (b) the colour purple being the predominant colour applied to the whole visible surface of the packaging of the goods.
Cadbury applied to delete (b) from its supposed series of marks, whilst retaining (a) under section 41 Trade Marks Act 1994 and rule 28 Trade Marks Rules 2008 (SI 2008/1797).
It was prompted to make this application by the Court's judgment in the long-running contested opposition proceedings brought by Nestlé in connection with a different (but similar) trade mark application. Cadbury deemed the application necessary in order to avoid an invalidity attack on the basis that the registration was not a sign capable of graphical representation (
Nestlé
decision). A hearing officer at the UKIPO decided that the trade mark was not a series mark. Cadbury appealed to the High Court who subsequently dismissed the appeal. Cadbury's appealed that decision to the Court of Appeal.
Court of Appeal decision
The Court of Appeal held that, taking both parts of the description and reading the description as a whole, what is being described is every conceivable case where purple is the predominant colour, including the case where no other colour is visible. The informed reader of the registration would conclude that the various alternatives covered by the description were not intended to identify separate marks but were parts of a generalised but imprecise description of a single mark.
The reader of the description of the mark must be taken to be aware of the requirements for the registration of a series of marks and that the rules at the time required the applicant to include in a series application a representation of each mark claimed to be in the series.
The reader might be able to extract from the graphical material and the wording taken together a representation of the mark described by the whole surface wording but they would struggle to find any other representation complying with the provisions of the Trade Marks Act. The reader would understand that the registration could not possibly satisfy the requirements for a series of marks.
Even accepting the whole surface wording as being tolerably clear, the reader would still consider that the predominant colour wording inevitably covers representations which differ materially and which create a different identity. No series of marks had therefore been defined.
The Court concluded that the trade mark registration was an attempt to register a single mark which falls foul of the requirements for clarity and precision. It would be far-reaching to allow the trade mark registration to be read as an attempt to register a number of marks.
Case Ref: EWCA CIV 2715
