In a recent High Court case, His Honour Judge Hacon, a Judge in the specialist Intellectual Property List, has upheld that the trademark for the Mini Babybel product should be deemed invalid on the grounds that the trademark’s description did not identify a specific shade of red and therefore was not sufficiently clear and precise to enable the trademark to distinguish the origin of cheese.

The trademark at the centre of this dispute was a 3D UK trademark.  The trademark had been filed in 1996 by Fromageries Bel SA and registered in class 29 in relation to cheese.  Alongside the picture (set out below), there was the following description: “The mark is limited to the colour red.  The mark consists of a three-dimensional shape and is limited to the dimensions shown above”. 

 Babybel Cheese Dimensions

The original UKIPO decision

Sainsbury’s filed a declaration of invalidity against Fromageries’ trademark and put forward a number of arguments to the UK Intellectual Property Office Registry (UKIPO). 

One of Sainsbury’s arguments, that the colour red in the description did not provide sufficient clarity and precision to be capable of distinguishing origin and that a particular shade of red should have been specified, was successful. 

The UKIPO Hearing Officer said that the absence of a colour identification code meant that the colour was not represented in an objective and durable manner and that the description was not sufficiently clear and precise. 

 

The High Court’s decision

Fromagerie appealed the UKIPO’s decision to the High Court.  The Court rejected all of Fromagerie’s grounds of appeal and held that Sainsbury’s declaration of invalidity remained unsuccessful.  This was for the following reasons:

  • Fromagerie should have identified the shade of red in order to ensure that the trademark was capable of distinguishing its cheese from those of its competitors.
  • The written description specified dimensions but did not specify either a shade of red or that the shade of red should be that in the picture. Therefore, anybody considering Fromagerie’s trademark would consider that the description covered any colour red.  Indeed, the description and the picture could be deemed inconsistent.
  • The graphical representation did not take precedence over the written description.
  • The Court also rejected an argument that Fromagerie should be allowed to retrospectively limit its intellectual property rights to a specific shade of red.

As a result of the High Court’s decision, Fromagerie’s trademark is due to be removed from the trademark register unless a further appeal is made.

 

What can we learn from the High Court’s decision?

This case highlights the importance of identifying a specific shade of colour in the descriptions of non-traditional trademarks, such as 3D trademarks.  This is essential where colour is considered a vital characteristic of the trademark. 

Owners of older 3D trademarks, in particular those who filed written descriptions alongside a pictorial description, which were considered valid at the time of registration, may now find their registered trademarks are susceptible to attack.  Trademark owners may want to consider filing new trademarks so as to enhance and protect their intellectual property rights.

 

Need help and advice with trademarks and intellectual property?

Our specialist intellectual property disputes team routinely advises on a broad range of disputes relating to trademarks along with other intellectual property disputes relating to copyright, patents, confidential information and data protection. 

The team is highly skilled at advising on design rights and reputation management issues and are regularly instructed by clients from the arts, media, textile and clothing sectors in the UK and internationally. 

If you need advice on trademark or other intellectual property infringements, please do not hesitate to contact a member of the team today. 

Telephone: 0161 9414000 or e-mail lawyers@myerson.co.uk.