Societe Des Produits Nestle SA v Mars UK Ltd.

Under the Trade Marks Act 1994, a limitation under section 13 concerns the scope of rights conferred by registration. It cannot add essential features to the representation of the mark or alter its identity. Section 39(1) permits restriction of the goods or services covered, but cannot introduce colour or dimensional features which define the mark itself. Section 39(2) permits only specified corrective amendments and prohibits substantial changes to the mark. Where the mark as filed is unregistrable, the applicant must file a fresh application for the amended, registrable mark. A limitation of rights is distinct from a change to the mark.

Nestle applied under the Trade Marks Act 1994 to register a three-dimensional shape of a POLO mint, without its embossed word and without claiming any particular colour or size, for sugar confectionery. Mars opposed registration under sections 3(1)(b) and 3(1)(d). The Principal Hearing Officer found acquired distinctiveness only for white, mint-flavoured compressed confectionery of the standard POLO size and allowed amendments reflecting those features.

Lloyd J allowed Mars’s appeal, dismissed Nestle’s appeal and substituted a refusal of the application: [2004] R.P.C. 548. Nestle appealed on the construction of sections 13 and 39, arguing that the limitations could be made without changing the identity of the mark. The central issue was whether registration could proceed on a mark differing from the sign represented and described in the original application.

The Court of Appeal, in a judgment delivered by Lord Justice Mummery as the judgment of the court, dismissed Nestle’s appeal with costs. Permission to appeal to the House of Lords was refused.

1. Nature of the mark. The applied-for sign was the three-dimensional shape of a sweet. The Hearing Officer found that it had acquired distinctiveness only when it was white and of the standard POLO size. Colour and size were therefore essential ingredients of the distinctive mark. They were absent from the sign for which registration had originally been sought.
2. Section 13. Under the Trade Marks Act 1994, a limitation under section 13 concerns the rights conferred by registration. It operates so that use outside the limitation is not treated as infringement, although it might otherwise fall within section 10. It does not add descriptive features to the mark or alter its representation. The proposed colour and size requirements were therefore not limitations on rights but additions to the mark itself.
3. Section 39(1). The specification could be restricted to mint-flavoured compressed confectionery, because that was a restriction of the goods covered by the application. Colour and dimensions, however, restricted the mark itself, not the goods. They could not properly be introduced by changing the specification of goods.
4. Section 39(2) and the authorities. Sections 13 and 39 had to be read together. Section 39(2) permits only corrections concerning the applicant’s name and address, wording or copying errors, and obvious mistakes, provided that the correction does not substantially affect the identity of the mark or extend the goods or services. The court approved the approach in Swizzels Matlow Ltd’s Application [1999] R.P.C. 879 and applied the reasoning adopted in Robert Mc Bride Ltd’s Trade Mark Application [2003] RPC 19: a limitation must leave the graphic representation intact and cannot be used to circumvent section 39. If the mark as filed is unregistrable, a fresh application is required.
5. Lloyd J had made the right order for the right reasons. Nestle’s existing application was therefore refused, leaving the fresh application to carry its later filing date.

• Court of Appeal (Civil Division) dismissed Nestle’s appeal with costs and refused permission to appeal to the House of Lords.
• High Court (Chancery Division) on 9 December 2003 allowed Mars’s appeal from the Registrar, dismissed Nestle’s appeal and substituted a refusal of the application: [2004] R.P.C. 548.
• Registrar of Trade Marks found that the sign had acquired distinctiveness only subject to limitations concerning the goods, colour and size, and invited Nestle to amend the application.