Factual and Procedural Background
This case concerns an appeal from a decision dated 12 April 2019 of a Hearing Officer in an opposition brought by Company A against three trade marks applied for by Company B in Class 30, each relating to the colour purple in different formulations ("the Opposition", "the Marks"). The opposition succeeded against two of the marks and failed against one. Company A and Company B had a long-running dispute over the use of purple as a trade mark for chocolate, which was settled after the Hearing Officer's decision but before the appeal hearing. Company A did not participate in the appeal hearing. The Comptroller-General of Patents, Designs and Trade Marks ("the Comptroller") intervened in the appeal to assist the Court on an area of law considered uncertain and important. The appeal focuses on two legal issues arising from the Hearing Officer's decision concerning the validity of two marks.
Legal Issues Presented
- Whether the second mark, which describes the colour purple applied to packaging without specifying the degree of application, avoids the problem of ambiguity and multiplicity of forms identified by the Court of Appeal in a prior decision.
- Whether the third mark, described as the colour purple per se (the "Libertel form"), without reference to how the colour is used, is capable of being a sign under the Trade Marks Act 1994, or whether it suffers from the same problems identified by the Court of Appeal.
Arguments of the Parties
The opinion does not contain a detailed account of the parties' legal arguments.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Libertel Groep BV v. Benelux-Merkenbureau (Case C-104/01) |
A colour per se, not spatially delimited, may have distinctive character if it can be represented graphically in a clear, precise, self-contained, easily accessible, intelligible, durable and objective way. |
The Court applied Libertel to confirm that a colour per se mark designated by an internationally recognised code (Pantone) can be valid, distinguishing it from marks that include ambiguous wording leading to multiplicity of forms. |
| Société des Produits Nestlé S.A. v. Cadbury UK Ltd [2013] EWCA Civ 1174 |
A mark describing a colour with ambiguous wording such as "predominant colour" fails as a "sign" due to lack of clarity and precision, leading to multiple forms and unfair competitive advantage. |
The Court relied on the Court of Appeal's reasoning to reject marks with ambiguous descriptions but found that a mark for the colour applied to the whole visible surface was acceptable. |
| Sieckmann v Deutsche Patent- und Markenamnt (Case C-273/00) |
A sign does not have to be visual; a smell can be a sign if it can be graphically represented with clarity, precision, objectivity and durability. |
Referenced as part of the general principles on graphical representation of non-traditional marks. |
| Heidelberger Bauchemie GmbH v. Bundespatentgericht (Case C-49/02) |
Applications covering colours in every conceivable form lack the required precision and uniformity and must be refused. |
Used to illustrate the problem of marks covering multiple forms and lack of specificity. |
| Dyson v Registrar of Trade Marks (Case C-321/03) |
A mark for a product property that can take multiple appearances is not a sign indicating source and should be refused to prevent unfair advantage. |
Applied to reinforce the principle that marks must be precise and not confer broad monopolies over product features. |
| Glaxo Wellcome v. Sandoz [2017] EWCA Civ 335 |
Guidelines on colour marks are non-binding and subject to change; case law remains the authoritative source. |
The Court declined to give weight to guidelines in preference for binding legal principles. |
Court's Reasoning and Analysis
The Court analysed the appeal by reference to the binding principles established in the Court of Appeal decision and the CJEU's Libertel ruling. The Hearing Officer had found that the first mark, describing the colour purple applied to the whole visible surface of packaging, was valid, whereas the second and third marks were invalid due to ambiguity and multiplicity of forms.
Regarding the second mark, which described the colour purple applied to packaging without specifying the extent, the Court agreed with the Hearing Officer and the Court of Appeal that this lack of specificity allowed for multiple visual forms, including combinations with other colours, leading to uncertainty and unfair competitive advantage. This ambiguity made the mark invalid as a sign under s. 3(1)(a) of the Trade Marks Act 1994.
Conversely, the Court disagreed with the Hearing Officer's rejection of the third mark, the Libertel form mark, which was the colour purple per se with a Pantone designation but without reference to use or packaging. The Court reasoned that such a mark is conceptually a single, unchanging sign regardless of its use on packaging, advertising, or the goods themselves. The Hearing Officer's reasoning was inconsistent in treating this mark differently from the first mark, which was accepted. The Court emphasised that the Libertel form mark does not suffer from the "multitude of forms" problem because it is a single conceptually uniform sign. The Court noted that to invalidate all Libertel form marks would be inconsistent with established case law and would preclude practically all such marks.
The Court clarified that the issues before it concerned only the requirements under s. 3(1)(a) and s. 1(1) regarding whether the marks constitute valid signs. It did not address acquired distinctiveness under s. 3(1)(b) or matters of infringement or relative grounds.
In conclusion, the Court distinguished between marks that are ambiguous and cover multiple permutations (such as the second mark) and marks that are a pure colour per se with clear graphical representation (such as the third mark), endorsing the validity of the latter.
Holding and Implications
The Court's final decision was that the appeal against the second mark is DISMISSED, and the appeal against the third mark is ALLOWED.
This means the second mark remains invalid due to its ambiguity and lack of specificity, while the third mark, a pure colour per se mark designated by Pantone without limitation on use, is recognized as a valid sign under the Trade Marks Act 1994.
The decision clarifies the legal position on colour marks, confirming that Libertel form marks can be valid, whereas marks with ambiguous wording allowing multiple forms cannot. No new precedent beyond the application of existing binding authorities was established. The ruling provides guidance for the UK Intellectual Property Office and future applicants on the importance of precision and clarity in colour mark applications.