Branding Update: Failed Attempts to Register Colours and Game Pieces as Trade Marks

    October 2013
    The UK Court of Appeal has just handed down two landmark trade mark rulings. The rulings will have implications for anyone looking to register a mark in the UK that is less conventional than the usual trade name or logo, such as a colour, sound or smell. Both rulings concern the interpretation of Article 2 of the Trade Marks Directive (2008/95/EC) in the context of applications to register unconventional or “exotic” marks. Article 2 provides that, to be registered, a mark must be a “sign” and “capable of being represented graphically”. The first judgment was in the case of Société Des Produits Nestlé S.A. v Cadbury UK Limited. Cadbury applied for a UK trade mark for the colour purple in respect of chocolate products as applied to “the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.” The second case of (1) JW Spear & Son Limited (2) Mattel Inc (3) Mattel UK Limited v Zynga Inc was heard at the same time as the Cadbury case, by an identically constituted Court of Appeal. The rulings were also handed down on the same day. In this case, Mattel owned a UK registered trade mark for a tile used in the well-known game of Scrabble (Tile Mark). The Tile Mark was “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.” The Court of Appeal held that Cadbury’s application should be refused and Mattel’s trade mark should be invalidated. Both marks failed to satisfy Article 2 because each raised the possibility of a multitude of different visual forms meaning the marks lacked the required clarity, precision, self-containment, durability and objectivity to qualify for registration.