Fromageries Bel SA v J Sainsbury Plc

For a trade mark containing colour but not consisting of colour alone, precision as to hue is not automatically required merely because colour is an essential characteristic. The question is whether the colour contributes to the mark’s capacity to distinguish and whether a particular hue is needed for that purpose. That is a question of fact and degree.

A verbal description and pictorial representation must together identify the subject matter and scope of protection clearly and precisely. An application under section 13(1)(b) of the Trade Marks Act 1994 cannot introduce an essential feature into the mark to make it distinctive.

Fromageries Bel SA appealed against a decision of Allan James, sitting as a Hearing Officer of the Trade Marks Registry, which declared its three-dimensional red cheese trade mark invalid under section 3(1)(a) of the Trade Marks Act 1994. The Hearing Officer held that the description “the colour red” lacked sufficient clarity and precision because it did not specify a particular hue.

The appeal challenged the application of the Sieckmann criteria, the relationship between the pictorial representation and the written description, and sought permission under section 13(1)(b) to limit the mark to Pantone 193C. Sainsbury’s maintained that the fuchsia parts of the representation created a further inconsistency.

1. Appeal dismissed. The registered mark was invalid under section 3(1)(a) of the Trade Marks Act 1994.
2. The Sieckmann criteria apply to trade marks generally. However, the need to specify precisely the hue of a colour in a mark containing colour but not consisting of colour alone does not depend on whether the colour is an “essential characteristic” in the technical sense developed under the shape exclusions in article 7(1)(e) of Regulation 40/94. That approach was unnecessary and unhelpful in the present context.
3. The relevant question was whether the mark could distinguish the cheese of one undertaking from that of others if the proprietor could use any red hue, or vary the hue. The need for precision depended on the extent to which the colour contributed to the mark’s capacity to distinguish and whether only a particular hue could confer that capacity. This was a question of fact and degree.
4. On the evidence, the shape, dimensions, pull tags and colour were the candidate identifying features. There was no sufficient market evidence that any red hue would distinguish the goods. On the balance of probabilities, the mark could be distinctive only if a particular hue of red on the main body of the product was associated with the proprietor. The mark therefore had to be limited to a single hue, which the registration did not do.
5. The pictorial representation did not limit the words “the colour red” to the hues appearing in the picture. The description and representation had to be read together, but they did not provide a clear and precise subject matter if the picture was treated as imposing a narrower limitation. The court agreed with the Hearing Officer’s reasoning, including the principle discussed in Glaxo Wellcome UK Ltd v Sandoz Ltd and reflected in Hartwall and Red Bull GmbH v EUIPO.
6. The application to specify Pantone 193C under section 13(1)(b) failed. That provision permits a limitation on the rights conferred by registration, such as narrowing the acts which would constitute infringement. It does not permit an additional essential feature to be inserted into the content or description of the mark. The application was analogous to Nestlé SA’s Trade Mark Application.
7. The Respondent’s Notice failed. A reader of the specification would conclude that “the colour red” encompassed the colour of the pull tags.

• Trade Marks Registry: Allan James, sitting as Hearing Officer, decided on 13 February 2019 that UK registered trade mark no. 2 060 882 was invalidly registered under section 3(1)(a) of the Trade Marks Act 1994.
• High Court (Chancery Division): The appeal was dismissed and the application under section 13(1)(b) was refused.