Factual and Procedural Background
This appeal concerns the circumstances under which a colour can be registered as a trade mark, focusing on the legislative requirements that a trade mark must be "a sign" and "graphically represented." The respondent, Company A, applied to register a trade mark for chocolate featuring a specified shade of purple (Pantone 2685C). The application described the mark as the colour purple applied to the whole visible surface or being the predominant colour on the packaging of the goods. The application was accepted and published but opposed by the appellant, Company B, before the Principal Hearing Officer, who allowed the application with an amended specification of goods. Company B appealed unsuccessfully to the High Court, challenging the mark's registrability on the grounds that it was not "a sign" and was not capable of graphical representation. The current appeal arises from the order dismissing Company B's appeal and directing registration of the mark with a specified goods description.
Legal Issues Presented
- Whether a colour, specifically a shade of purple as described, can constitute "a sign" under the Trade Marks Directive and the Trade Marks Act 1994.
- Whether the mark applied for satisfies the requirement of being "graphically represented" with clarity, precision, and objectivity.
- Whether the verbal description including the term "predominant colour" introduces vagueness or uncertainty incompatible with the requirements for trade mark registration.
- Whether the appeal court should refer questions of interpretation of the Directive to the Court of Justice of the European Union (CJEU) under Article 267 TFEU.
Arguments of the Parties
Appellant's Arguments
- The assessment should begin with the requirement of graphic representation to determine what sign is being applied for and whether it meets criteria of clarity, precision, and objectivity.
- The findings on distinctiveness do not affect the Article 2 assessment, which must be based on the graphic representation itself.
- The mark includes a colour plus a verbal description allowing multiple visual forms, meaning it is not a single, fixed sign.
- The term "predominant" introduces vagueness and subjectivity, failing the requirements of specificity and clarity.
- Allowing such a mark would create uncertainty for the Registrar and competitors and confer an unfair competitive advantage.
- The assessment of whether the mark is "a sign" and "graphically represented" must precede any consideration of acquired distinctiveness.
Respondent's Arguments
- The application was rightly accepted by the Hearing Officer and the appeal dismissed by the judge; no material error of principle was made.
- The mark is distinctive of Company A and complies with EU requirements as interpreted by the CJEU in relevant cases.
- The term "predominant" does not introduce unacceptable vagueness; it is a reasonable and accepted description in trade mark registrations.
- Registration would not confer an unfair competitive advantage as the colour is precisely defined and others can use other colours on packaging.
- A reference to the CJEU is unnecessary because the legal issues have been authoritatively decided.
- The sign applied for is a single, fixed colour (Pantone 2685C) represented graphically as a colour swatch without contours.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Libertel Groep BV v. Benelux-Merkenbureau (Case C-104/01) [2003] ECR 1-3793 |
A colour not spatially defined can be registered as a trade mark if it is a sign, graphically represented, and capable of distinguishing goods or services. |
The court applied Libertel to confirm that a single colour can be a sign and be graphically represented if properly defined, but emphasized that the present mark's verbal description introduced problematic variability. |
| Sieckmann v. Deutsche Patent und Markenamt (Case C-273/00) [2002] ECR 1-11754 |
A non-visual sign such as a smell can be a trade mark if graphically represented with clarity, precision, objectivity, and durability. |
Referenced to underline the high standards of graphical representation required for unconventional marks. |
| Heidelberger Bauchemie GmbH v. Bundespatentgericht (Case C-49/02) [2004] ECR 1-6129 |
Applications for colour combinations in every conceivable form must be refused for lack of precision and uniformity. |
Used to support the conclusion that marks covering multiple visual forms without precision do not satisfy registration requirements. |
| Dyson v. Registrar of Trade Marks (Case C-321/03) [2007] ECR 1-687 |
A mark representing a product property rather than a sign indicating origin is not registrable; marks covering multiple appearances in an abstract manner are problematic. |
Supported the court's reasoning that the mark must be a single, identifiable sign, not a multitude of forms. |
| Public Relations Consultants Association Ltd v. Newspaper Licensing Agency Ltd [2013] UKSC 18 |
Guidance on when a reference to the CJEU is appropriate under Article 267 TFEU. |
Referenced in the context of whether to refer the matter to the CJEU, with the court deciding such reference was unnecessary here. |
Court's Reasoning and Analysis
The court began by affirming the established legal requirements under Article 2 of the Trade Marks Directive and the Trade Marks Act 1994 that a trade mark must be a "sign" and be "graphically represented" with clarity, precision, objectivity, and durability. It reviewed the relevant CJEU case law concerning unconventional marks, especially those involving colours, which require a fixed, stable sign capable of distinguishing goods.
The court noted that the mark applied for by Company A was not merely a colour per se but included a verbal description allowing the colour purple to be the "predominant colour" on packaging, rather than applied uniformly across the whole visible surface. This verbal description introduced an inherent variability and vagueness, creating a multitude of possible visual forms not graphically represented or precisely described.
The court found that this variability meant the mark did not constitute a single "sign" as required, but rather multiple signs with differing permutations and appearances, undermining the principle of certainty essential to the trade mark register and fairness to competitors. The use of the term "predominant" was deemed too subjective and imprecise, failing the standards of clarity and specificity mandated by the Directive and case law.
While the Hearing Officer and the judge below had accepted the mark as a sign and graphically represented, the appellate court identified this as a fundamental error in principle. The court emphasized that the tests set out in Libertel and related cases require a mark to be clear, precise, self-contained, intelligible, durable, and objective, which the present mark's description did not satisfy.
The court declined to refer the matter to the CJEU, finding the existing case law sufficiently clear to decide the appeal. It acknowledged the public importance of the issue given the intellectual property rights conferred by trade marks but limited its decision strictly to the facts and legal principles before it.
Holding and Implications
The court ALLOWED THE APPEAL, setting aside the order that the mark should proceed to registration.
The direct effect of this decision is that the trade mark application by Company A for the colour purple with the verbal description including "predominant colour" does not meet the legal requirements for registration as it fails to constitute a single "sign" that is graphically represented with the necessary clarity and precision. No broader precedent beyond the parties is established, and no reference to the CJEU was deemed necessary. The ruling reinforces the strict standards for registering colour marks and the importance of precise and unambiguous graphical representation in trade mark applications.