Cadbury UK Ltd v The Comptroller General of Patents Designs and Trade Marks

A registered trade mark description which embraces an unknown number of signs is not thereby converted into a series of trade marks. The statutory provisions governing series marks are a gateway to the related deletion rules. Those rules apply only where the registration is properly a series registration and the marks satisfy the statutory criteria. They cannot be used to remove part of a non-series description, even where the proposed deletion would narrow the registration and might avoid invalidity. The proper construction of the description must be determined from the description as a whole.

Cadbury appealed against the Registrar’s refusal to delete wording from a registered description of a purple-colour trade mark. The proposed deletion would remove the words referring to purple being the predominant colour on the visible surface of packaging.

The application followed the Court of Appeal’s decision in Société Des Produits Nestlé S.A v Cadbury UK Ltd [2013] EWCA Civ 1174, concerning a materially identical description. Cadbury argued that the registered description comprised two alternative marks, or a series of marks, so that one could be deleted under rule 28 of the Trade Marks Rules 2008. The central issue was whether the registration was a series registration within section 41 of the Trade Marks Act.

1. The appeal was dismissed. The registration was not a series registration, and the requested deletion could not be entertained.

2. The description had to be read as a whole. The reference to purple being the predominant colour did not describe one separate mark. It encompassed a large but unknown number of signs in which purple predominated over other colours or visual material. The Court of Appeal’s reasoning in Société Des Produits Nestlé S.A v Cadbury UK Ltd [2013] EWCA Civ 1174 did not establish that the description contained two marks or a series of marks.

3. Section 41(2) of the Trade Marks Act requires series marks to resemble one another in their material particulars and to differ only in non-distinctive matters which do not substantially affect the identity of the trade mark. The common characteristic that purple predominated was insufficient. Some signs within the description might contain other matter contributing to their distinctive character, so the description also covered marks which could not form part of a series.

4. Section 41 provides the gateway to the rules concerning series marks. Rule 28(5) of the Trade Marks Rules 2008 permits deletion only of an identifiable mark in a registered series. It cannot be used to bypass the safeguards governing registration as a series, or the statutory restrictions on alteration of a registered mark.

5. The Hearing Officer’s three reasons for refusal followed from the conclusion that the registration was not a series registration. His decision disclosed no material error of principle warranting appellate intervention.

• High Court (Chancery Division): On appeal from the Registrar of Trade Marks’ Decision No O-281-15, the appeal was dismissed.