Blessed are the cheesemakers?

Babybel makers lose trade mark appeal in dispute with Sainsbury's

In a decision this week, the High Court has upheld the UK Intellectual Property Office's (UKIPO) earlier finding that the trade mark registration belonging to Fromageries Bel SA (FBSA) for the wax-coating of their popular Babybel cheese is invalid.

The cheese manufacturer had been in dispute with supermarket giant J Sainsbury plc and these decisions may be seen as part of a developing trend of case law against holders of non-traditional trade marks.

Recent high-profile litigation has drawn attention to the difficulties of non-traditional trade mark registrations, with the "purple" colour mark held by Cadbury owner Mondelez International inc., (which since its registration in 1995 has been the subject of a good deal of back-and-forth legal skirmishing) finally being surrendered in February of 2019 after the Court of Appeal found against Cadbury's attempts to limit and refine the scope of its coverage, in response to earlier decisions.

Registered in 1996, shortly after the Cadbury mark, FBSA's registration in respect of their Babybel wax coating described the mark as follows and included the following image:

"The mark is limited to the colour red. The mark consists of a three-dimensional shape and is limited to the dimensions shown above."

In February 2019, a Hearing Officer at the UKIPO dealt with an application by Sainsbury's to invalidate FBSA's mark on grounds that the description of the colour was "ambiguous," and did not match the pictorial depiction of the mark filed as part of the registration. The Hearing Officer found in favour of Sainsbury's, noting that the colour was an essential characteristic of the mark and that the description did not do enough to define a particular shade of red. The use of the word "red" was found to be insufficiently precise and lacking in clarity such that it did not meet the requirements of section 1(1) of the Trade Marks Act 1994. It was also noted that recent case law at the time (including the litigation involving Cadbury's) had established that where colour was an essential characteristic, a mark should specify a Pantone or similar precise reference.

FBSA appealed this decision to the High Court, arguing that because the colour red was just one of "several essential characteristics," and that it was therefore not necessary for the exact shade or hue to be specified in the description.

The court accepted and confirmed that the question of whether or not a mark designating a colour needed to be specific as to a precise hue turned on whether the other elements of the mark were sufficient to distinguish the commercial origin of the goods or services, without considering a precise colour. If not, the Court said, then it would be a requirement that the mark should specify (e.g. by a Pantone reference) the exact shade.

In the case of Babybel, however, the High Court agreed with the IPO that the other pleaded "essential characteristics" of the mark, including the shape and dimensions of the product and the pull tags, were not sufficient distinguishing factors absent the reference to a precise colour, and so the mark was only capable of being used to distinguish the FBSA product from other brands and products if it used the specific hue of red that was associated with Babybel cheese.

The case is another cautionary tale (following the outcome of the long-running Cadbury's litigation) for holders of and would-be applicants for non-traditional (and especially colour-reliant) trade marks in the UK. If colour is felt to be an essential component of what makes your mark distinctive then it will be essential to take care in crafting your application in order to describe that colour with sufficient clarity and precision, ideally by reference to an accepted system like Pantone numbers.

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.