Out-Law News | 07 Jan 2020 | 2:36 pm | 3 min. read
His Honour judge Hacon, sitting as a deputy High Court judge, reached that view in a case in which he was asked to consider whether a trade mark held by food manufacturer Fromageries Bel for its 'Mini Babybel' cheese product was valid.
In his ruling, the judge offered guidance on the degree of specificity that brand owners will need to provide in relation to the colour of trade marks in cases where the marks contain other elements beyond merely their colour.
He said: "It seems to me that where a mark contains colour but is not a colour per se mark, the need for precision as to hue will depend on the extent to which other elements of the mark serve to make the mark capable of distinguishing. More exactly, it will depend on the extent to which the colour of the relevant feature of the mark contributes to making the mark capable of distinguishing and whether it is likely that only a particular hue will confer on the mark that capacity to distinguish. It will always be a question of fact and degree."
The trade mark registered by Fromageries Bel comprised a combination of the product's puck-like shape, dimensions and red waxed shell, as well as the inclusion of pull tags which consumers can use to open up the shell to access the cheese. Fromageries Bel relied on a pictorial representation alongside some text to describe the mark.
Supermarket giant Sainsbury's claimed the mark was invalid. That view was upheld by a hearing officer at the UK's Trade Marks Registry in February 2019, but Fromageries Bel appealed against the decision. The High Court rejected the manufacturer's appeal shortly before Christmas.
Central to the case was the question of whether Fromageries Bel had been specific enough in the way it had described the colour of its trade mark as being "limited to the colour red". The hearing officer had previously held that the wording "did not provide sufficient clarity and precision", and said that the company should have specified a particular hue of red in its description.
In his ruling, deputy High Court judge Hacon explained that the use of a "colour identification code, thereby pinning down the colour to a particular and easily identified hue, is liable to assist … in ensuring that the mark is capable of distinguishing" one product from another. He said that "it has largely been assumed that a colour identification code will be necessary for a colour per se mark", but explained that such precision will not always be required for marks with multiple features including their colour.
The judge said: "Turning to marks containing colour which are not colour per se marks, it is of course the entire mark, including non-colour elements, which must be capable of distinguishing. However, the colour element may play a part in ensuring that it is and that in turn may depend on the colour being of a particular hue."
In considering the validity of the Fromageries Bel trade mark, deputy High Court judge Hacon considered competing views from witnesses for the company and Sainsbury's.
A senior manager at Fromageries Bel said the specific shape and size combined with the colour red is relied upon and recognised by consumers to identify Mini Babybel, but a lawyer for Sainsbury's said the mark is never used in isolation as other distinctive branding, including branded wrapping featuring the trade name 'Babybel', is present.
The judge said that the question he had to answer was whether the trade mark is capable of distinguishing the cheese of Fromageries Bel from the cheese of competitors on the assumption that the hue used in the trade mark may be any hue of red which the company wishes to use and is free to vary from time to time.
In answer to that question, deputy High Court judge Hacon said: "I have reached the view on the balance of probabilities that the trade mark could be capable of distinguishing only if a particular hue of red used on the main body of the product is associated with [Fromageries Bel's] cheese. It follows that the trade mark must be limited to a single hue of red."
Fromageries Bel argued that its trade mark met this requirement since the only red to which its text description could be referring was the hue shown in the pictorial representation, but the judge rejected that view. The judge also rejected the company's attempt to retrospectively specify a particular hue of red for its trade mark.
Trade mark law expert Iain Connor of Pinsent Masons, the law firm behind Out-Law, said: "This case is another example of the difficulty in obtaining trade mark protection for non-conventional trade marks. It shows that extreme care is required to ensure that the subject matter of the trade mark is ‘clear and precise’ so that the public and others know the scope of the protection."
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