Time for a trade mark rethink

Trade mark law is  now so complicated that even specialist judges find it hard  to interpret


In 1994 the legislature made a major change to trade mark law. This was intended to provide the ability to register “non-traditional” trade marks such as colours and shapes, as well as words and Logos. It can now safely be said this idea has comprehensively failed.

The Court of Appeal (CoA) handed down two judgments on 4 October. Nestle v Cadbury was about Cadbury’s attempt to register the colour purple when used as the “predominant colour” of packaging for chocolate, as a trade mark. Spear v Zynga was about the attempt by the maker of Scrabble to register a trade mark consisting of a tile “on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range one to 10”. Both were refused. It was held that the applications covered a multitude of possibilities and were therefore not “signs”, nor were they “graphically represented”.

The Scrabble case was clear. The normal Scrabble tile is familiar to anyone who has played the game, but the wording of the mark really does offer a raft of possibilities as to letters and numerals, and how they are represented. For example, Zynga’s lawyers showed tiles with the well-known combinations O2 and F1, which would be covered by this registration. What is more surprising is that the mark was invalidated at the summary judgment stage. The Scrabble proprietor was not even given the chance of a trial to show that the public recognised its tiles as distinctive. But then, it was being greedy.

In the Cadbury case, by contrast, the court overturned the successive findings of experienced and respected specialists. The problem was not with the colour purple itself, but with the word ‘predominantly’. Both first instance judges thought the word did not introduce any more vagueness and uncertainty than is already present and acceptable in trade mark registrations. The CoA disagreed.

It is true that the word ‘predominantly’ opens the door to different visual forms of purple wrapper for a chocolate bar. That said, the decisions of the two lower courts seem much more practical. Most people seem to recognise the distinctive Cadbury’s shade in relation to chocolate bars, but if the CoA’s
approach is correct it is hard to see how Cadbury could ever protect the colour purple for this purpose. It would have to register every type of product packaging as a trade mark in its own right, with a fresh round of trade mark applications every time the packaging changed. So over time the trade mark register would become cluttered with a vast forest of marks, all of which would be recognised by the public as Cadbury marks because they were – well, because they were predominantly – purple wrappers for bars of chocolate. 

Questions of fact and degree arise in virtually every case.

The CoA’s decision in Cadbury may be seen as harsh insofar as it discourages attempts to do what the legislature intended to allow. However, what is more striking is the divergence of views between that court and the views of those taking day-to-day legal decisions on trade marks. If this is because trade mark law is now so complicated the UK’s top specialist judges disagree about what it is, it is time for a new law.