REUTERS | Henry Romero

Recent developments in trade mark law: shapes, colours and confusion

A look at some recent developments in trade mark law in relation to protecting 3D shapes, two-colour combinations and logo marks, and what this means for brand owners.

3D shapes must be used as badge of origin

The recent decisions of the Court of Appeal in Societé des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358 (KitKat case) and London Taxi Corporation Limited v Frazer-Nash Research Limited and Ecotive Limited [2017] EWCA Civ 1729 (London black cabs case) highlight the difficulties faced by brand owners hoping to protect shape marks, and the hurdles they have to overcome to prove the distinctiveness of inherently non-distinctive marks, such as the shapes of products and packaging.

KitKat case

The KitKat case is the most recent instalment of Nestlé’s ongoing battle to register the well-known 3D shape of the four-finger KitKat bar in respect of chocolate and various other goods in class 30.

The Court of Appeal considered whether the KitKat shape, which is not of itself inherently distinctive, had acquired distinctiveness through use within the meaning of section 3(1) of the Trade Marks Act 1994 (the Trade Marks Act), which gives effect to Article 3(3) of EU Parliament and Council Directive 2008/95/EC of 22 October 2008 (the Directive).

Upholding the High Court’s earlier decision that it had not acquired distinctiveness, the court decided that the fact that a shape has become well known does not mean that the public perceive it to be a badge of origin in the trade mark sense. The court found that, although the public may find that the shape brings to mind the KitKat product and brand name, that does not mean the shape has acquired distinctiveness for the purposes of trade mark law.

Instead, consumers must regard the shape alone, and no other trade mark (such as the KitKat name), as exclusively indicating Nestlé as the origin of the goods.

London black cabs case

Just a few months later, the court reached the same conclusion on the shape of another iconic UK product in the London black cabs case. The case concerned the London Taxi Corporation’s (LTC) registered UK and EU trade marks depicting the shape of its black cabs, and Frazer-Nash Research’s plans to launch a hybrid electric taxi with a similar appearance.

The court considered the same test for acquired distinctiveness that it had applied in the KitKat case, and found that LTC was unable to produce sufficient evidence to show that the shape of its cabs alone acted as a badge of origin.

Although LTC had taken steps to try to educate the public as to the significance of the shape of its cabs (including by placing adverts on the flip-up seats inside the cabs, identifying itself as manufacturer), the court felt that the consumer’s focus would be on the driver, and not the manufacturer, of the cab. The consumer would not know that there was only one manufacturer of cabs with that particular shape, and that the manufacturer was LTC, which was essential to establish distinctiveness under the Directive.

The court dismissed LTC’s appeal against the High Court’s earlier ruling and cancelled its existing registrations.

Impact for brand owners

It is clear from both of these cases that, whilst the criteria for assessing distinctiveness is technically the same for all types of trade marks, the public’s perception is not the same for 3D marks as it would be for word or figurative marks.

With this in mind, brand owners should think carefully about how they use their shape mark to promote their product, and consider ways they might help consumers to think of the shape itself as a badge of origin, separately from any other trade mark associated with their product.

When applying to register their shape mark, brand owners might also benefit from submitting parallel applications at both the UK and EU registries, in case proceedings involving the mark are decided differently by each registry.

For more Practical Law content on these decisions see the following legal updates:

Two-colour marks must be specific and unambiguous

In joined cases Red Bull v European Union Intellectual Property Office (Cases T-101/15 and 102/15), the General Court of the EU considered two EU trade mark (EUTM) registrations for a combination of two colours, blue and grey, as commonly seen in a wrap-around of four quarters on the cans of energy drink Red Bull.

During the application process, each of the trade marks passed the European Union Intellectual Property Office (EUIPO) examination stage for acquired distinctiveness, and proceeded to registration in 2002 and 2010 respectively. Optimum Mark successfully applied to the Cancellation Division to invalidate both registrations on the grounds that they failed to meet the requirements for an EUTM as set out in Article 4 of Regulation No 207/2009 (now Article 4 of Regulation No 2017/1001).

After an unsuccessful appeal to the Board of Appeal, Red Bull, supported by EU brand owners’ association MARQUES, asked the General Court to consider the issue. Dismissing the action, the court upheld the Cancellation Division’s decision, finding the registrations to be imprecise and broad, and failing to fit the requirements of a trade mark.

The registrations detailed the protected colours (blue pantone 2747C and silver pantone 877C) and their ratios (approximately 50%-50%), but failed to specify any particular manner in which they would be arranged. The court found that this made it difficult for the public to understand the full scope of Red Bull’s rights from inspecting the EUTM register, contrary to the requirement that “a sign must always be perceived unambiguously, uniformly and durably” (paragraph 45). The court found that each possible arrangement of the colours would produce a very different overall impression on consumers, preventing them from repeating with a purchasing experience with any certainty.

Impact for brand owners

Whilst the court acknowledged that “it is possible that colours or combinations of colours may be capable, when used in relation to a product or a service, of being a sign” (paragraph 40), it gives little practical guidance as to the type of colour marks that it would find acceptable.

However, it is clear that brand owners applying to register colour marks need to work hard to show a specific and predetermined arrangement of the colours that they are seeking to protect.

If, from looking at the graphic representation of their marks alone, there is any doubt as to the exact scope of protection being applied for, brand owners should also submit a written description of their particular colour arrangement to the registry, to ensure the best chances of success.

Brand owners wanting to go further and protect the overall appearance of their product within the EU (which may include colours important to its visual branding), might also benefit from considering registered Community design protection, subject to meeting the requirements set out in Regulation (EC) No. 6/2002 on Community designs.

For more Practical Law content on this decision see Legal update: EU General Court confirms colour combination marks invalid.

Likelihood of confusion requires global assessment

In January, the General Court of the EU in Starbucks Corporation v EUIPO (Case T-398/16) strengthened the protection afforded to EUTM logo marks by finding in favour of Starbucks, protecting its well-known circular logo against an application which looked similar but contained completely different words and images.

The applicant was seeking to register EUTM word and logo marks COFFEE ROCKS for “services for providing drinks”, which Starbucks opposed on the basis of nine EU trade mark registrations and UK and Spanish national registrations for various versions of its Starbucks logo, for the same and similar services.  Disagreeing with the EUIPO Board of Appeal’s earlier rejection of Starbucks’ opposition, the court held that, when assessing confusion, all elements of the marks must be compared, and not just the dominant elements, because “the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details” (paragraph 45).

Putting this assessment into practice the court agreed with Starbucks that, although the main image and actual text used in the applicant’s mark were different to Starbucks’ main image (a musical note and COFFEE ROCKS as opposed to a mermaid and STARBUCKS COFFEE), there were three sets of visual similarities between the signs when taken as a whole:

  • The signs “have the same general appearance” (paragraph 51) due to their circular shape and the placement of text within that shape.
  • This “general appearance” is strengthened by use of the same colours and font.
  • The signs both use the word COFFEE which, although descriptive of the goods and services to be provided by both trade mark owners, cannot be disregarded when considering the overall impression of the marks on the average consumer.

Considering these similarities, along with the phonetic and conceptual similarities between the marks, the court found that the Board of Appeal erred in failing to carry out an overall assessment of the likelihood of confusion.

Impact for brand owners

The court’s decision improves the protection granted to logo marks.

If there is sufficient visual similarity between the marks and use of the same font, the owner of the earlier mark could succeed in showing a likelihood of confusion in the EU, even if the later mark has used completely different words and images.

The decision also brings greater support for well-known brands. The court reminded that “trade marks with a highly distinctive character, either per se or because of their recognition on the market, enjoy broader protection” (paragraph 70), suggesting that it may be more inclined to find a likelihood of confusion when faced with similarity between marks, if the earlier mark is owned by a famous brand. This principle was reiterated by the UK Intellectual Property Office last week, in its decision in favour of PepsiCo, Inc. (PepsiCo, Inc v Teng Yun International PTE Limited [2018] O/134/18, paragraph 29(h)).

Practical law resources

For more Practical Law content on trade marks, see the following practice notes:




Jennifer Phillips

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