Too late to change trade mark application, says High Court

The UK High Court ruled last week that Nestlé could not make material amendments to its application for a three-dimensional trade mark in the middle of the application process. The confectionary giant wanted to protect the shape of a Polo mint.

It was back in December 1994 that Nestlé applied to register the three dimensional Polo shape, without the word "Polo" subscribed on it, as a trade mark. But in July 1997, rival confectioner Mars lodged its formal opposition.

Mars claimed both that the mark was "devoid of distinctive character" and could therefore not be registered, and that the trade mark was in "common usage by various traders" in the UK.

The issue came before the UK Patent Office's Trade Mark Registry in October last year. The Hearing Officer ruled that, as it stood, the application could not be registered, but added that the application could be registered if three conditions were met:

1. The specification must be limited to "mint flavoured compressed confectionery".
2. The sign must be limited to the colour white.
3. The sign must be limited by size, in terms of depth and diameter of both the mint and the hole, to that of the standard POLO mint.

Mars appealed to the High Court, claiming that the amendments made material changes to Nestlé's original trade mark application.

No transcript of the ruling is yet available, but according to the Legal Media Group, Mr Justice Lloyd agreed, ruling that such major changes to a trade mark application were not permitted in terms of the Trade Mark Act 1994.