June 20, 2019
Babybel loses its shape mark with colour limitation
Babybel loses its shape mark with colour limitation

Last week, we posted a blog on the recent decision by the UK Court of Appeal against Cadbury UK Limited regarding their registration for the colour purple. Following this judgment, Fromageries Bel S.A., the owner of Babybel cheese, has received a similar blow following the decision by the UKIPO in February to invalidate their registration for their shape mark, claiming the colour red:

The description of this mark reads:

‘The trade mark is limited to the colour red. The mark consists of a three dimensional shape and is limited to the dimensions shown above’

In its claim that the registration should be invalidated, Sainsbury’s main grounds of argument were firstly that the trade mark is not graphically represented and therefore, does not constitute a sign as required in terms of section (1)(1) of the Trade Marks Act 1994 (“the Act”). Secondly, they argued the sign consists exclusively of a shape which results from the nature of the goods themselves, is necessary to achieve a technical result and gives substantial value to the goods contrary to section 3(2) of the Act.

Sainsbury’s was unsuccessful with their arguments about the shape of the mark in regards to section 3(2) of the Act, as the UKIPO was not convinced that a generic moulding process was used to make Babybel cheese, nor that the shape of the cheese achieves a technical result (mainly due to the particular dimensions of the cheese – the arguments do not apply to a cheese of this size). There was also a lack of evidence showing that the particular shape and dimensions of the Babybel cheese gave substantial value to the goods (bite-size portions) which could not be achieved by a different shape and size of cheese.

In any event, the UKIPO expressed its view that colour was an essential feature of the mark and therefore, the exclusions to registration under section 3(2) of the Act could not be applicable in this instance as the exclusions only apply to marks that consist exclusively of a shape.

Sainsbury’s were, however, successful in invalidating the mark as the description of the colour was ambiguous. It was held that without a Pantone colour code, the word ‘red’ could refer to any number of shades of red and was, therefore, insufficiently precise to satisfy the requirement for a geographical representation. Although the mark incorporated a verbal as well as a pictorial description, it was held that the absence of a colour identification code (Pantone colour code) meant that the colours are not represented in an objective and durable manner.

What does this mean for owners of colour trade marks such as Cadbury and Fromageries? If a colour is very important to the image of your brand, take care when obtaining protection for a colour mark and ensure that it complies with the legal requirements at the date of filing.

Review your brand portfolio regularly with your legal adviser to ensure that your rights have not become vulnerable as a result of developments in the law. If there is any doubt about the validity of your registrations, immediately file a new application that addresses potential issues to avoid any gaps in time which could allow a third party to file a conflicting mark in the interim.

The law is a living beast that is ever-changing and it is imperative for brand owners to continuously review their portfolio to ensure that no right is left vulnerable to attack without full knowledge thereof.

Fomageries Bel v J Sainsbury [Babybel shape mark ] O/086/19

Tags
Food & Drink /  Trademarks /  Disputes

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