Tag Archives: trademark

Trademark protection of pantone 2685c not wrapped up by Cadbury

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Image for Blog Post - Cadbury

Securing trademark protection for colours is notoriously difficult, as demonstrated by the recent Court of Appeal ruling in the litigation between Cadbury and Nestlé, concerning the trademark registration of pantone 2685c.

Nestlé v. Cadbury

In 1914, as a tribute to Queen Victoria, whose favourite colour was purple, Cadbury started to use the shade of purple known as pantone 2685c on its packaging, and it has done so ever since. In October 2004 Cadbury applied for trademark protection of this shade of purple for all chocolate goods. In 2008 Nestlé opposed the registration. After three years of proceedings between the parties the case went through to a hearing. Five months later, in December 2011, a final decision was made by the Hearing Officer, who concluded that the colour was capable of being registered. Nestlé subsequently appealed this decision. In May 2012, the High Court ruled in favour of Cadbury but limited the trademark protection to chocolate bars and chocolate drinks. See our previous blog post (Can You Trademark A Colour? Cadbury Secures The Rights To The Colour Purple) for further details. In its ruling of 4 October 2013 the Court of Appeal overturned the decision of the High Court.

Three Court of Appeal Judges found that the trademark lacked “specificity, clarity and precision of visual appearance”, and therefore to allow the trademark to be registered would, they said, “offend against the principle of certainty and the principle of fairness by giving a competitive edge to Cadbury and by putting Nestlé and its competitors at a disadvantage”. The reason for this decision was that the wording Cadbury had used to describe the colour was ambiguous. Cadbury described the colour in its application for trademark protection as: “the colour purple (Pantone 2685c) …. applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods“. It was the use of the word ‘predominant’ within this description that led to the Judges determining that the trademark lacked clarity, as it “opened the door to a multitude of different visual forms”. Cadbury argued that the word ‘predominant’ meant that the colour covered more than 50% of the surface area in question and Sir Timothy Lloyd did suggest that “if Cadbury had spelled this out in their registration it may have been possible to achieve certainty”.

Cadbury have indicated that they may appeal this decision. If they do appeal, the case will most likely be heard by the European Court of Justice. It will certainly be interesting to see what happens next.

It is important to remember that this decision does not mean that Cadbury cannot pursue anyone who now launches a range of chocolate bars and goods packaged within the same or similar shade of purple. They still have the right to bring a passing off claim against anyone who tries to misrepresent their goods as Cadburys.

Trademark protection for colours

To register a trademark, whether it is a word, logo, colour or shape, the applicant must show that the trademark is a sign, can be graphically represented and is capable of being distinguished from other trademarks. As this case demonstrates, it is difficult to secure trademark protection for a colour due to the requirement that the trademark must be graphically represented in a clear and unambiguous manner. Although difficult, it is not impossible to trademark a colour and many companies have managed to do so. For example, Tiffany’s have registered pantone 1837, better known as Tiffany Blue, for boxes, shopping bags and the cover of catalogues, and Heinz have secured trademark protection for the distinctive turquoise colour found on the packaging of its baked beans.

What can we learn?

It is important to ensure that when you register a trademark your application is clear, precise, durable and unambiguous. We must learn from the mistakes made by Cadbury in their application to register pantone 2685c.

Trademark law can be complex, especially if you are trying to register a colour or shape. Professional advice is essential, as trademark lawyers can help draft your application to ensure that it meets the necessary requirements, giving you a better chance of securing trademark protection. This is particularly important with UK trademark applications as the IPO appears to be taking an increasingly tough stance when determining what is and is not capable of registration.

Bands and Brands: (Some of) The original cast of Bucks Fizz strike out

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Recently, Robert Gubby (aka Bobby G) succeeded both in an opposition brought against his former band members in connection with their application to register the trade mark mark THE ORIGINAL BUCKS FIZZ, and in defending an action for revocation of the mark BUCKS FIZZ, owned by his wife Heidi Manton.  The case report is available via the IPO Bucks Fizz to consist of the original lineup.  Further clarifying the Registry’s view, the Hearing Office explained:

‘Plainly, once the public became aware that most or all the original members of the group were once again performing under tha namen Bucks Fizz, the public’s expectations as to the line-up of any particular group appearing under that name was liable to change.  But the recent confusion is not the result of the use made of the mark by its owner … [who] cannot be held responsible for that because … such use was not with [their] consent’

This is not the first dispute arising in connection with ownership of an act’s name after members of the band have left.  The IPOs decision cites the SAXON case, in which Laddie J. explained that ownership of a band name vests in the band partnership, and that individual band members, though they have an interest in the name and associated goodwill, do not own the assets themselves.  Importantly, the judge found that a second band using the same name, established following the disbanding of the first, will acquire separate rights in the goodwill it generates.  The question was then whether or not the goodwill of the initial band has evaporated; whether its rights have been abandoned; or whether it has acquiesced to the second band’s activities – in that case, and as suggested in the BUCKS FIZZ case, the original band members were found to have abandoned their share in the goodwill, leaving the latest incarnation of the band with stronger rights.

Under dissimilar circumstances, the SUGABABES brand, after the last of the original band members left last year, has recently been the subject of a dispute.  Mutya Buena, one of the founding members, filed an application for the European Community Trade Mark in March 2009, on the assumption that after the last of the founding members of the band left, the Sugababes had effectively ‘ended’.  This was opposed on the basis of earlier rights owned by the latest incarnation of the band, whose Heidi Range argued: “Our record company [Universal] owns the name so there’s no conversations about who owns the name”.  The band currently includes 3 members, none of whom were involved in the original line-up, and in light of the strength of goodwill in the brand associated with the group the opposition was successful.  Buena’s application was stripped of much of its content, resulting in a narrow, arguably near-worthless registration for: Paper, cardboard and goods made from these materials, not included in other classes; stationery; paper gift wrap and paper gift wrapping ribbons.

The words of Laddie J. in SAXON are a concise warning, and of continuing relevance to bands and other businesses whose brands are liable to become valuable assets alike:

A properly advised band could avoid the problem that [a change in membership] might cause by entering into a partnership agreement which expressly provides for the partnership to continue on the departure of one or more members and which expressly confirms the rights of the continuing and expressly limits the rights of departing partners to make use of the partnership name and goodwill.

Is Trade Mark Registration Necessary? – Part 2

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In our blog post last week  Is a Trademark necessary for your business? we mentioned how some people are confused about trademarks.

We explored the relevance of trademarks for SMEs, the potential danger of a DIY approach and when a trademark may not be capable of registration.

This week, among other things, we look at international registrations, name searching, and risk management.

International registrations

International registrations which involve extending an existing trademark registration to other countries, such as under the system known as the Madrid Protocol, make it very important to have a well drafted UK trademark registration.

If your initial trademark registration is not adequate to cover your business activities it will be worthless.  To then invest in wider international trademarking on the basis of that application would be misguided.

So, if you have registered your own trademark, it’s worth getting professional help from a trademark lawyer before extending the registration to other countries.  It may well be necessary to file a fresh base application – that is, a UK trademark, at the same time with your Madrid Protocol application.

Otherwise, if you base a Madrid protocol application on an inadequate registration you will be transferring those inadequacies across to the registrations in other countries.

Businesses that just want to get going

Some people use a new name not because they are particularly attached to it but because they need a name in order to get going with their business.

If you fall into this category then trademarking would not be appropriate for you.  Instead check the trademark registers to ensure your use of the name will not cause problems by infringing on others’ rights, and then just proceed to use the name.  There is no requirement to have a trademark in order to use a name.

The 3 registrations: company, domain and trademark.

The simple road map for choosing names for an online business is to check 3 registers: trademark, domain and company.

The order is significant and it is best to start with the trademark registers, as trademarks are the most legally effective way to stake out claims in a name.  If the name is already registered on the trademark registers for your category, then choose another one.  There is no point even looking at available domain or company names.

But we have noticed people often confuse the rights granted by each type of registration.  It is widely believed that a domain and company registration give conclusive rights in a name.  Often the trademark registers are completely neglected.

Although the law of passing off gives you some rights over a business name you have used, and in which you have built up rights, the scope of your protection is, in practice, limited to the rights you can prove you’ve generated.  This requires evidence of use, confusion and more resources to enforce than small businesses can afford.  It also has all the uncertainties inherent in litigation.

It is, in practice, easier to enforce rights in a name you have registered as a trademark, than in a name you have simply been using. A registered trademark is on the public registers, and as such notifies the world of your rights in the name.

If you have a domain name dispute, it is easier to pursue your claim by attaching a trademark certificate.  Without a registration, you would need to produce volumnious information about your rights in the name, and your domain name ownership may be more vulnerable to attack by other trademark owners.

A trademark is also indispensable if you have any user name disputes relating to social media sites.

We have seen instances of clients registering a domain without doing a trademark search, and then finding themselves on the defensive when a trademark owner considers the domain name to be confusing, and applies to have it transferred.

Therefore, in practice, not having a trademark registration could mean building your brand on a house of cards.

Risk management

If you have been in business for a long time, you may wonder (like many it seems) whether registering a trademark is really worth the expense.  One reason it might be, is when it comes to exiting the business.  Anyone taking over the  business will expect to see a registered trademark in the name you have been using for the business.

A prudent businessperson should constantly seek to pre-emptively reduce their exposure to risk.  So, risk  management is another important reason for protecting the brand with a trademark and other IPRs.

While acquiring a trademark may seem costly to a start-up which is inherently conscious of cashflow, it is inexpensive relative to the potential cost of litigation further down the line. 

The fact that you can build up rights to a name without registering it as a trademark does not mean there is no value in registering a trademark, and so it should not dissuade you from registering a trademark.  Whether you would be able to prevail in future litigation to reclaim the name from someone else who may beat you to it by registering the name first is uncertain.  So why set yourself up for litigation, when it is so easy to register the name when it’s available?

There is a place for DIY registrations provided you take the time to learn to do it well.  But do get professional help later if your business takes off.  Professional guidance will check that your registration is adequate, and is particularly important when you want to apply for wider protection internationally.

Is a Trademark necessary for your business?

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Effectively protecting your intellectual property rights (“IPRs”) is one of the most vital decisions a start-up business can make.  Unfortunately however, taking the appropriate steps to legally protect the brand and goodwill of a business is all too often the last thing on the mind of eager entrepreneurs.  Even experienced business persons are prone to misunderstanding the scope and effect of IPRs. Undoubtedly, one of the most misconceived IPRs is that of trademarks.

Pooling research from an Azrights poll, as well as analytics from search engine suggestions, we have compiled a number of common questions and trends in order to ascertain firstly: which aspects of trademarks are generally misunderstood, and subsequently to explain the legal and commercial advantages in exploiting your IPR by acquiring trademarks.

If you are contemplating whether a trademark is of relevance to you or your business, you may find the following useful.

General  confusion

From our research it became apparent that there is a general confusion regarding trademarks and how they operate.  Many queries we received asked what trademark law, infringement, dilution, protection etc actually is.

Also, there was a general confusion as to what trademarks actually protect and how they differ from copyright, why a trademark is important or necessary at all, concerns about how much registration is going to cost, and several queries relating to which trademark symbols to use (either ™ or ®).

Questions, opinions and concerns regarding trademarks
More specifically one point which became clear from our research is an obvious do-it-yourself attitude with regard to trademarks, in particular in relation to trademark registration.

For example, common requests from business start-ups are for templates for contracts , licencing agreements, applications and assignments, cease and desist letters and letters of consent.

It seems people would rather take the obvious risks involved in copying a sample precedent obtained for little cost, or registering a trademark themselves, in order to avoid paying for legal advice. 

DIY and risks

If you are intending to register your own trade mark then I imagine the key motivation is to economise.

However, Trade mark law is complicated and registering a trade mark yourself will inevitably entail risk.

First, you need a thorough search to be done of the registers to clear your brand name before registering.

People who neglect this first step can quickly end up with an opposition to their mark by other trade mark owners and dealing effectively with oppositions involves a significant amount of time and resources.

So if you were originally aiming to save money, when faced with an opposition, you may be forced to seek legal assistance, legal advice to clarify your chances of success and possibly representation.

But if you can minimise the occurrence of an opposition by instructing a proper search first then this could actually save you money in the long run.

Beware also that searching is not simply a matter of checking the registers. Trade marks are organised by categories of goods, so if you see someone with the same name as your trade mark then that may not be the end of the game.  An experienced trade mark attorney can guide you within this field.

What can I or can’t I register?

From our survey we saw that people are often confused about what they can and can’t register as a trade mark (for example letters, figures and logos).

Conversely, some people may think that they can trade mark any word, but that is certainly not the case.

There are a number of restrictions on the types of trade marks or words that can be registered. Not knowing the limitations of trade marking could mean the registry office throws out your application.

The value of your trade mark

Another area to be aware of is that trade mark applications have to have the right scope.

They should be tightly drafted and should respond to your current and future business (i.e. they should reflect the potential growth of your business).

In this respect, you will need to know which categories of goods and services ‘Classifications’ are relevant to your business and from the thousands of descriptions within a classification you will need to assemble and adapt the descriptions to your business, which is certainly not a straightforward task.

This is because your descriptions and classifications essentially determine the scope of your trade mark, so getting them right is fundamental , as the value of your trade mark is intrinsically linked to this exercise.

Badly drafted applications end up not being worth the paper they are written on, and essentially defeat the purpose of pursuing legal protections in your business at all.

Also, some people register their logos on the misapprehension they are obtaining substantial rights in the word elements.  To avoid future misunderstandings, you should be clear from the outset about what rights you will be obtaining in a registration.

More on this next week…

Country Names and Trade Marks

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Is it possible to register a country name as a trade mark? For example, would you be able to register a country name  like JAMAICA as a trade mark?

Does it make any difference which goods or services you provide? What if you wanted to register JAMAICA for jerk chicken spicy sauce or rum beverages?

These are questions that can come up if you choose a country name as your trade mark.

The trade mark Act at Section 3(1) (c) prohibits the registration of marks designating geographical origin.

A country name would, on first view, appear to be prohibited from registration.

However, where the geographical significance of the country name can be displaced then a trade mark may be registered.

This might happen through either extensive use of the mark or by conceptual disassociation.

Regarding extensive use, customers using the ICELAND store do not think that the goods come from Iceland as a country, therefore, the geographical origin of the name ICELAND in this case is displaced.

Regarding disassociation, where there is no possibility of the place name indicating geographical origin, such as NORTH POLE for bananas, the geographical significance is displaced.

It is notable that JAMAICA is already on the Madrid Protocol register in class 3 and 42  and on the EU register in class 3.

These were for soap and other beauty products and are owned by Procter & Gamble.

A JAMAICA registration was refused a Madrid application in 2006. This was for alcoholic drinks and fruit juices.

These examples show a potential trend whereby the Registry has to take a view as to whether the goods and services indicate geographical origin for a specific country name.

In other words, examiners use their discretion to decide which products are famously associated with a country name.

In the first example, the examiner decided the country Jamaica is not well known for its cosmetics therefore the geographical significance of the name may be displaced. Essentially, the general public will not think that the cosmetics come from Jamaica.

However, Jamaica is famous for its rum, so it is possible that the refusal of JAMAICA for alcoholic drinks was linked to the public thinking that the trade mark JAMAICA for alcohol would communicate that the products come from the country itself.

Following this line of reasoning it would be hard to see a trade mark application for GERMANY for sausages or FRANCE for wine or UNITED STATES for burgers succeeding.

It may also be the case that the reason JAMAICA succeeded for Procter & Gamble was through showing extensive use in the same way that ICELAND (the supermarket) did.

So if you are thinking about registering a country name as a trade mark consider whether you have  extensive use of the trade mark and whether, in the eyes of the public, your goods and services could be disassociated with the country name.  Also bear in mind that if you need wider international registrations, approaches may vary amongst registry offices and according to national laws.  This could therefore add to the costs of registration.

Apple will survive Steve Jobs’ departure

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Following from my earlier blog on how Apple may suffer without Steve Jobs, this post focuses on reasons why Apple may well continue flourishing even without Jobs.

To recap, some say Apple is too reliant on Steve Jobs to be able to continue doing well without him, pointing to how the company suffered during Jobs’ 10 year absence over 20 years ago.  However, Apple has moved on since its near bankruptcy during Jobs’ absence from the company, and has grown a lot stronger as a whole. Despite what has happened on previous occasions, Apple now probably has the strength to survive without its founder.

Apple is a well oiled machine

Tim Bajarin who works for the research firm Creative Strategies is optimistic about Apple as a company as a whole, referring to it as a “well-oiled machine”. Although Steve Jobs has been the creative genius behind Apple, it is not him alone that makes the company what it is today. Employees have been trained to “think like Steve”, and recently a number of the creative ideas have not come purely from Jobs. On top of this, whilst Jobs has been integral to making the company what it is today, he has now laid down solid foundations to be built upon. Back in 1985 the company did not do so well without Jobs because the foundations were not yet in place.  Now the company has been built to ensure it is not entirely reliant on one man for its survival. New products and updates are already lined up for the future that could help to continue to fuel the company’s pre-eminence in design.

Besides Steve Jobs there are a number of other valuable members of the Apple team who should not be overlooked. Tim Cook has been in charge of overseeing the company during Jobs’ leaves of absence for ill-health, and is predicted as a potential successor to Jobs. During Jobs’ absences he has been very successful in maintaining the smooth running of the company, doing so well that on his first time he was promoted to COO. Additionally Jonathan Ives is one of the top industrial designers in the world and Eddy Cue has helped make iTunes and App stores a great success. With such talented individuals working for Apple, it is unlikely the company would fail without Jobs.

Disney, Hewlett Packard and Ford have survived

Looking back at how other companies have done when they have lost their founders also suggests Apple’s continuing success.

Disney is still ongoing without Walt Disney; HP is going strong without Hewlett and Packard, and Ford without Henry Ford. If all these companies managed without their founders, then surely Apple will be able to do the same? On top of this, unlike these companies, one of Jobs’ primary concerns has been to build a brand that can survive on its own terms.

As Warren Bennis, a professor of business administration at the University of Southern Carolina, puts it, whilst before people were interested in creating products, “there is a different kind of innovation today that has to do with crafting the overall experience”. Jobs would have ensured that he had created a strong brand as well as good products.


On the whole the prospects for Apple look promising. With a potential successor, and many products lined up for the future, the likelihood is that the company will be able to keep going without Jobs.

However, whether it would be able to sustain its differentiating position for pre-eminence in design is debatable as it is difficult anyway to be pre-eminent in design long term given the emergence of other companies that also excel in design.

Tottenham Hotspur: Loss of Trade Mark Rights Through Relocation

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Tottenham Hotspur’s bid to move from Tottenham to the new Olympic Park has been raising eyebrows recently.  David Lammy, MP for Tottenham and former Minister for Intellectual Property, has threatened to take legal action if the club take their name with them when they move. It is argued it would be misleading and deceptive if they continue using the registered trade mark “Tottenham Hotspur” once they have moved. This raises an interesting question: what happens when a trade mark owner decides to change the location of their business, when their registered trade mark is inextricably linked with their geography?

Successful registration does not guarantee the indefinite protection of a trade mark.  Aside from expiry, there are two important ways in which a mark might be removed from the registers: invalidation, and revocation.  One of the grounds for revocation is, as argued by Lammy, that the use of the trade mark is liable to mislead the public, but when does the use of a trade mark become misleading? Can a trade mark become misleading where its owner alters the geographical location of their business in such a way that the mark, formerly suggestive of origin, leads consumers to make an incorrect assumption about where goods or services come from?  Of course it can, but not in all cases. A trade mark owner should be entitled to move their business around, but at the same time the law should protect consumers from being mislead about where goods and services come from.

The question here is whether the move of Tottenham Hotspur to the Olympic Park will indeed mislead the public. In this regard it should be considered to what extent the public rely on Tottenham in the club’s name as a geographical indication. The name certainly shouldn’t be taken to suggest that the players are Tottenham born and bred, given that the team includes stars from Brazil, Russia and Ireland. Nor does the name of a football club tell you where the majority of the fanbase is located – Manchester Utd being the obvious example. In this case, it might be argued that the public expect the name of the team to tell them the location of the club’s home ground, but on the other hand, could the name not be seen as simply characteristic of the club’s history? If the players, management and fans of a club are not bound geographically, then does it matter that a club’s home ground isn’t where it was when the club was founded? What are your thoughts?

Football fanaticism aside, a takeaway point for businesses here is that successfully registering their trade mark is not necessarily the end of the battle.  Third parties can apply for revocation on a number of grounds, and trade mark owners should give some thought to the way their marks are used, where relevant including provisions in licensing agreements to ensure that licensees don’t use their mark in a misleading manner, which might jeopardize its registration.