Societe Des Produits Nestle SA v Mars UK Ltd.

This appeal raises a short, but rather important, practical point on amending an application to register a trade mark: in what circumstances is the applicant allowed to amend his application to register a mark after the Registrar has indicated that the particular mark, for which he has applied, is not registrable? When should the applicant be allowed to amend in order to make the mark registrable? When should he be made to start all over again with a fresh application?

POLO mints (“the mint with the hole in the middle”) are famous sweets. On 20 December 1994 Societe des Produits Nestle SA (Nestle) applied (Application No.2006992) under the Trade Marks Act 1994 (the 1994 Act) to register a particular sign as a trade mark in Class 30 in respect of “sugar confectionery.” The sign is graphically represented in a black and white photograph. Words printed below the photograph state “This mark consists of the three-dimensional shape represented above.” The three-dimensional shape in the photograph is the familiar shape of a POLO mint, but without the word “POLO” embossed on it. No particular colour or size is claimed in the application. It is common ground that, if colour is an element of a mark, the practice is to indicate a claim to colour. In the absence of such an indication, the mark will be treated as having no colour claim. The use of the mark, if it is then registered without reference to colour, will amount to use of an identical sign whatever the colour.

On 2 July 1997 Mars UK Limited (Mars) filed a notice of opposition to Nestle’s application, contending that the sign (in the form of the shape of the specified goods) should not be registered, as it was devoid of distinctive character (s3(1)(b) of the 1994 Act) in the absence of some other distinguishing feature, such as the embossed word POLO, and it was in common usage by various traders in the UK (s.3(1)(d) of the 1994 Act).

In his written decision of 23 October 2002 the Principal Hearing Officer (Mr M Knight), acting on behalf of the Registrar of Trade Marks, rejected both objections. He held that, subject to certain conditions, the sign consisting of the shape of the specified goods had acquired a distinctive character through use in the UK. His decision was in the following terms-

The Hearing Officer accordingly found that, on the basis of the use of the particular sign demonstrated in the evidence, the application for registration could only proceed subject to the three specified requirements. As he had explained earlier in the decision (para 27)-

Nestle was invited by the Hearing Officer (para 41) to file Form TM21, the form prescribed for use under the Trade Mark Rules 2000 in connection with requests for amendment of pending applications under s39 of the 1994 Act, so as to amend the application in order to satisfy the three specified conditions. That was to be done within one month, failing which the application would be refused. The time for compliance with this requirement was suspended pending appeal. As at present advised Nestle wishes to amend the application by adding limitations as to colour and size along the following lines, which, it contends, would leave the existing graphic representation of the mark intact in compliance with s39:

Both Nestle and Mars appealed to the High Court against the “limitations” specified by the Principal Hearing Officer. On 17 January 2003 Nestle’s solicitors (Bird & Bird) wrote to the Registry in connection with the appeals, stating that there was “some uncertainty as to what the Hearing Officer required in terms of the limitations specified in his decision.” The letter continued

The Registrar was asked to confirm that limitation in such terms would satisfy the requirements of the Hearing Officer’s decision. The letter concluded

In his reply of 23 January 2003 the Hearing Officer stated

Mars challenges the reliance of Nestle and the Registrar on ss 13 and 39(1) of the 1994 Act in relation to the “limitations” to the sign depicted in Nestle’s application. Mars’ position is that the Registrar had no power to accept or agree the proposed limitations to the sign applied for; that he ought to have allowed its opposition; and that he ought to have rejected the application for registration, leaving Nestle to make a fresh application for the mark in its amended form, if it so wished. In its initial application Nestle had defined the sign too widely. The evidence relied on by it to establish distinctiveness acquired by use did not justify the width of the sign represented in the application. Nestle was not entitled to amend the application, so that the identity of the mark, for which the registration application was made, would be substantially affected, while, at the same time, retaining the benefit of the original application date for a different mark.

In particular, Mars contended that the Registrar had no power to permit Nestle to amend its application to register the sign represented in the original application either (a) under s13, on its agreeing that the rights conferred by the registration should be subject to “limitations” in the form of the specified conditions; or (b) under s39(1), by Nestle restricting “the goods covered by the application” to goods which satisfied the three specified conditions.

On 9 December 2003 Lloyd J allowed the appeal from the Registrar by Mars and dismissed the appeal by Nestle. His judgment is reported in [2004] R.P.C. 548. He set aside the decision of the Registrar and substituted a decision refusing Nestle’s application to register the mark. The practical consequence was that Nestle’s existing application was rejected and that Nestle would have to make a new application for a fresh mark carrying a later filing date (as it did in March 2003).

The judge accepted the submission of Mars summarised at para 52 [2004] RPC at 554 that

Nestle appealed to this court with the permission of Chadwick LJ. It is a second appeal raising points of statutory construction affecting the scope of the power to allow amendments to a registration application as a condition of allowing an application to register to proceed.

The appeal turns on the construction and application of two sections of the 1994 Act: s13, covering disclaimers of rights and limitations on the rights conferred by registration; and s39 of the 1994 Act, covering the withdrawal of, restrictions on and the amendment of applications.

It is agreed that the two sections should be read together. Their underlying general policy is self evident: a person seeking to register a mark and thereby acquire statutory monopoly rights in it, should have to declare at the outset what is claimed as his exclusive mark. If the mark claimed by the applicant is for some reason regarded by the Registrar as unregistrable, the applicant is entitled to file a fresh application for a registrable version of the mark. Amendment of the mark after registration has been applied for is permissible, but only in very limited circumstances: see White Paper on Trade Marks Law (1990) para 4.09.

It is important to bear in mind that a mark filed for registration may be unregistrable for a number of reasons.

First, it may not satisfy the requirement of the definition of a trade mark in s1(1) of the 1994 Act: s 3(1)(a) of the 1994 Act. A trade mark is defined as meaning

Secondly, a trade mark is unregistrable if it is “devoid of any distinctive character” (inherent distinctiveness-s3(1)(b)) or if the applicant is unable to establish that “it has in fact acquired a distinctive character as a result of the use made of it (acquired distinctiveness-proviso to s3(1)).

Thirdly, certain signs are unregistrable as trade marks if they consist exclusively of certain shapes: a shape resulting from the nature of the goods themselves; a shape necessary to obtain a technical result; or a shape giving substantial value to the goods: s3(2).

The nature of the rights acquired on registration is also contextually relevant to the procedure for applications to register.

Once it has been registered, a trade mark confers exclusive rights on the proprietor to prevent others from using it in the United Kingdom without his consent in various ways, which infringe the rights conferred by the registration (s9): for example, using in the course of trade a sign, which is identical with the mark, in relation to goods or services, which are identical with those for which it is registered (s10(1)); or using in the course of trade a sign, where there exists a likelihood of confusion on the part of the public, because (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered (s10(2)) of the 1994 Act).

As Mr Geoffrey Hobbs QC, appearing for Nestle, reminded the court, registration does not confer on the proprietor a positive right to use the mark: its exclusive character confers on the proprietor a negative right to prevent others from using, without his consent, an identical or similar mark within the specified limits. The addition to a pending application of a disclaimer or of an absolute or qualified limitation under s 13, including a limitation as to size, is, Mr Hobbs explained, an aspect of that basic principle of intellectual property protection.

The wide discretion of the Registrar under the Trade Marks Act 1938 to allow amendments was abolished by the 1994 Act. The new provisions, in particular those governing amendments affecting the identity of the mark itself, are more restrictive. At the same time the 1994 Act preserves the procedure for agreement by the applicant that the rights conferred by registration shall be subject to specified limitations (s13) and the ability of an applicant to restrict the goods or services covered by the application (s39).

As indicated earlier, the critical statutory provisions are ss13 and 39 of the 1994 Act-

The changes made to UK trade mark law in the 1994 Act were intended to implement the EC Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks. The provisions of the Directive correspond in many respects with the provisions of Council Regulation 40/94 of 20 December 1993 on the Community trade mark. Provisions common to the 1994 Act, the Directive and the Regulation fall to be interpreted in the same way. Article 44 of the Regulation governs the withdrawal, restriction and amendment of applications-

Mr Hobbs made the point that, as held by the Hearing Officer, the mark in issue consists of the distinctive shape of the specified goods. The shape of the goods and the goods themselves are, he said, inseparable. The goods are the mark. The judge’s fundamental error was in not accepting that finding, against which Mars had not appealed, and in departing from it by holding that the mark should be regarded as “ a shape used in relation to particular goods, not only as the shape of particular goods.”

It was submitted that the judge had set aside the decision of the Registrar on the basis of flawed propositions. Mr Hobbs made many criticisms of the judge’s reasoning. It was contended that the judge misapprehended the scope and effect of the s13 and s39 requirements of the Registrar; that he had wrongly held that the application filed without limitations or restrictions as to size or colour was subject to an all-or-nothing requirement for the relevant mark to be distinctive in all sizes and all colours, in which it may conceivably be represented. That was an unwarranted expansion of the concept of trade mark identity. The Registrar had wrongly held that the multivalency thus required of the mark, as graphically represented in such applications, was a component of its identity for the purposes of s 39(2) of the 1994 Act. The real point was that Nestle was seeking to register a single distinctive shape mark within the spectrum of protection afforded by the infringement provisions of the 1994 Act. It was not seeking to register a spectrum or plurality of marks of different dimensions. The judge wrongly held that the Registrar has no power to permit post-filing limitations or restrictions as to size or colour. The judge wrongly required the Registrar to reject the application on the basis of an approach for which the legislation does not provide and to which present Registry practice does not adhere. It was argued that the ramifications of his erroneous judgment extended far beyond the facts and circumstances of the instant case.

We do not agree with the criticisms of the decision under appeal. In our judgment, Lloyd J’s succinct treatment of the essential point of statutory construction was correct and we reject the submissions of Nestle on the construction and application of ss13 and 39.

The issue is whether it is legitimate to allow Nestle to proceed to registration of a mark, which differs from the sign visually represented and verbally described in its initial application. On that issue we have reached the following conclusions on the construction and application of the two relevant sections of the 1994 Act.

The sign in Nestle’s original application for registration consists of the three- dimensional shape of a sweet. The sign is only registrable if it is distinctive. The sign is not inherently distinctive. The Hearing Officer found that, on the evidence of use of the sign, acquired distinctiveness existed in relation to Nestle’s mint flavoured sweets for the sign only if it is also white and of a given size. Those particular features of colour and size are necessary elements of the mark, if it is to match the degree of acquired distinctiveness established on the evidence; but those particular distinctive features are both absent from the mark, for which registration was originally sought.

A requirement that the elements of colour and size should be included in the mark in order to make it distinctive and therefore registrable, does not, in our judgment, fall within the provisions of s 13(1) that the applicant “may agree that the rights conferred by the registration shall be subject to a specified limitation.” The required inclusion of the colour and size elements is not a specified limitation on “the rights conferred by the registration” of the mark identified in the application. The requirements of colour and size do not limit “the rights”, which could have been acquired on registration without including them. The requirements relate to the inclusion of essential ingredients in the content of the mark in order to make it distinctive, thus satisfying the requirements for registration of the mark and thereby obtaining the rights conferred by it.

It is important to keep in mind that the “rights conferred by the registration” – which, under section 13(1)(b), an applicant may agree shall “be subject to a specified territorial or other limitation” - are rights conferred by section 9(1) and which would otherwise be infringed by use within section 10 of the Act. An applicant who agrees that the rights conferred by registration shall be subject to a limitation is agreeing, in effect, that the use of the mark outside the limitation is not to be treated as an infringement of the mark notwithstanding that such use would, otherwise, fall within section 10 of the Act. That is not at all the same thing as incorporating limitations in the description of the mark itself.

The point may be illustrated by reference to the limitation as to size proposed in the present case. Suppose that the mark were registered with the addition of the descriptive words “having an external diameter of approximately 2cm”. In infringement proceedings brought by the registered proprietor in respect of sugar confectionery in the familiar shape of a POLO mint, but having an external diameter of 2.5cm, the relevant question, under section 10(2)(b) of the Act, would be whether there was a likelihood of confusion; was the similarity such that the defendant’s 2.5cm sweet would be associated in the mind of an average consumer with goods emanating from the claimant. If, on the other hand, the mark were registered without limitation as to size – but subject to an agreed limitation that the rights conferred “were limited so as to exclude use other than in connection with sugar confectionery having an external diameter of approximately 2 cm”, the relevant question in infringement proceedings would be whether the defendant’s 2.5cm sweet was or was not sugar confectionery having an external diameter of approximately 2cm. Whatever protection the limitation as to “the rights conferred” might give the registered proprietor, it would not be the same protection as that which would be given by the addition of descriptive words to the mark as registered.

Mr Hobbs QC sought to avoid this difficulty by suggesting that the limitation to which his clients would agree was that the rights conferred “were limited to what they would have been if the claim as filed had included the additional descriptive words [as to size]”. But that underlines the true nature of what Nestle is seeking to achieve by recourse to section 13 of the Act. It is seeking to achieve an amendment to the description of the mark in respect of which it has applied for registration. If that is permitted by section 39 of the Act, it is unnecessary to rely on section 13; if that is not permitted by section 39, the restricted nature of the right to amend under that section cannot be circumvented by recourse to section 13.

This conclusion is in line with decisions on the construction of s 13 by two very experienced practitioners in this field. Swizzels Matlow Ltd’s Application [1999] R.P.C. 879 is a decision of Mr Simon Thorley QC, sitting as the Appointed Person, that it was not permissible to amend a three dimensional mark in respect of non-medicated confectionery (a circular tablet bearing a raised heart outline) in Class 30, which was inadequately described in the application for registration, by adding dimensions of depth and diameter as limitations under s13. The decision emphasised the importance of traders being able to identify with clarity precisely the sign that is to be the subject of registration: see p 885 As to the amendment of the application under s13, Mr Thorley said (at p887):

Mr Hobbs QC sought to distinguish the case as an impermissible attempt by the applicant to overcome the problem of there being no visual or pictorial image of the mark and consequent uncertainty as to the actual identity of the mark. In the present case a clear graphic representation of the mark in the form of the shape of the goods was submitted with the initial application and, he submitted, the identity of the mark is unaffected by the specified limitations.

In our view, the decision in Swizzels correctly states the approach to the amendment of an application in a case such as this. That approach was adopted in the decision in Robert Mc Bride Ltd’s Trade Mark Application [2003] RPC 19 (a decision of Mr Geoffrey Hobbs QC as the Appointed Person). He referred to the passage in the White Paper (paragraph 4.09) mentioned earlier, stating the importance of the applicant declaring at the outset what his mark is and that

As to a limitation under s13, Mr Hobbs held in McBride (para 15) that, in order to be free of the restrictions on amendment in s39, “the proposed limitation must leave the existing graphic representation of the relevant mark intact” and that “a limitation added under s 13 must operate simply and solely as a renunciation of protection that registration of the mark might otherwise have provided.” In respect of a colour limitation, he added that it must be defined with as much precision as would have been required if the relevant mark had been subject to it from the outset.

Similar considerations apply to the construction of s39, which deals with “restricting the goods covered by the application.” The goods covered by Nestle’s initial application are sugar confectionery. The specification of the goods covered by the application can be restricted under s 39, if it is too wide in respect of the goods covered by it. Thus, there is no dispute that the restriction of the application suggested by the Hearing Officer to “mint flavoured compressed confectionery” is a restriction of goods permissible under s 39.

It is not, however, a sensible and fair reading of the language of s 39(1), in the context of the decision of the Hearing Officer, to treat the requirements set by him as to the colour and size of the mark as “restricting the goods covered by the application” i.e. to those goods of the requisite colour and dimensions of depth and diameter. The requirements of colour and dimension do not restrict “the goods” covered by the application for registration of the mark. The requirements restrict the mark itself to that which distinguishes the goods covered by the application from the goods of other traders. The Registrar required the inclusion of the additional elements or features of colour and size in the mark itself, in order to make it registrable as a trade mark, which, on his factual findings of actual use and acquired distinctiveness, distinguishes the goods covered by the application. Nestle’s submissions incorrectly equate the shape of the mark, which distinguishes the goods, with the specification of the goods, which are distinguished by the mark.

For the above reasons Lloyd J made the right order for the right reasons. We would dismiss the appeal.