Trade Marks
Posted on 29/3/2019

What makes the colour red?

A case involving Sainsbury’s and the owner of the Babybel brand highlights the complexities of representing “exotic” trade marks.

Supermarket giant Sainsbury’s has successfully argued that a trade mark registration owned by Fromageries Bel SA, owner of the Babybel brand, is invalid.

The trade mark, which was registered in 1996, was represented and described as follows in Fromageries’ trade mark registration:

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

While the UK Intellectual Property Office (“the UKIPO”) rejected a number of other grounds put forward by SainsA case betbury’s, it agreed that the ambiguity surrounding the pictorial representation of the mark and the description meant that the trade mark was not graphically represented as required by the Trade Marks Act 1994.

Case law has made it clear that trade marks must be graphically represented in such a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

Sainsbury’s argued that the overall representation of the trade mark was not clear, precise or intelligible because, inter alia, although the description states that the mark is ‘red’, the pictorial representation shows the protrusions from the basic puck shape in white and fuchsia. Further, the colour ‘red’ used in the description of the mark was not clear or objective as it could cover a range of colours, all of which could be described as ‘red’.

The UKIPO rejected Sainsbury’s claim that the part of the trade mark shown in fuchsia and white created a mismatch between the pictorial representation of the mark and the description. It was found that the fuchsia colour could fall within the description of ‘red’ and that the use of a neutral shade like white was sufficient to make it clear that the colour limitation did not extend to the part of the trade mark shown in white.

However, the UKIPO recognised that, through case law, it is generally understood that a sample of the colour, or a mere description of the colour in words (such as ‘red’), is not sufficiently clear, precise and/or durable to satisfy the graphical representation requirement.  Instead, using an internationally recognised colour identification code has become the usual way of representing colour marks.

The UKIPO therefore found that the broad description ‘red’ did not satisfy the requirement for a graphical representation of the trade mark, nor did the colours shown in the pictorial representation as they did not limit the mark to the shades of red shown.

Fromageries’ trade mark registration was accordingly found invalid and will be cancelled. The registration will be deemed never to have been made, resulting in a loss of longstanding registered rights for Fromageries.

Earlier this year, UK trade mark law was amended to remove the need for trade marks to be represented graphically. The hearing officer decided however that the old law applied in this case because the mark was registered and the proceedings started when the old law was in effect, but also noted that he would have reached the same conclusion under the new law because there is still a need for trade marks to be represented in a way this is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

An important lesson from this case is that the relatively complex requirements for the representation of “exotic” trade marks such as the Babybel mark developed in case law since the law permitting registration of such marks was introduced can be applied retrospectively. As a consequence valuable registrations of such marks may be found to be invalid on largely technical grounds. It would therefore be prudent to review any existing registrations of such marks and consider re-filing in a different form to provide insurance against an invalidity attack.

It’s often not appreciated that there is scope for protecting “exotic” marks such as those consisting of the colour(s) and/or shapes of products. Our attorneys have experience in protecting such marks.

If you have any questions relating to this decision or any other trade mark matter, please do not hesitate to get in touch with one of our attorneys.

Wilson Gunn