Brands Update

The High Court has held that an application by Cadbury to register the colour purple (pantone 2685C) for milk chocolate and drinking chocolate in class 30 in "Libertel" form satisfies the "representation" requirement under section 1(1) of the Trade Marks Act 1994. A "Libertel" form of mark is an application for the colour per se, not spatially delimited. The question was whether such a sign is capable of being represented on the register in a manner which enables third parties to determine the clear and precise subject matter of the protection afforded as required by section 1(1). The High Court has said that it can be, over-turning a previous decision of the UKIPO.

However, the High Court upheld an earlier ruling that a second application for the same colour purple "applied to the packaging of goods" was not registrable. This wording would allow the mark to take on a multitude of different appearances and extend protection to situations where other colours were also present. The formulation was worse than that considered by the Court of Appeal in an earlier ruling between the same parties (in which "the predominant colour" wording was rejected). A third application to register the same colour purple "applied to the whole visible surface of the packaging of the goods" had previously been deemed to meet the "representation" requirement by the UKIPO.

The decision arose in the context of oppositions to the applications brought by Nestlé. Assuming the decision is not appealed, it means that applications for a single colour per se or a single colour "as applied to the whole visible surface of the packaging of the goods" would satisfy the "representation" requirement.

It should be noted that the High Court (and earlier Court of Appeal) decision does not preclude applications for colours as applied to goods. Provided the application specifies unambiguously how the colour is to be applied to the goods, it should satisfy the representation requirement. In all cases, an internationally recognised colour code is required.

The EU IP Office (EUIPO) has announced the approach it proposes to take to the classification of virtual goods and NFTs. The proposal is in response to increasing numbers of applications containing terms relating to virtual goods and NFTs. The EUIPO says:

• "Virtual goods are proper to Class 9 because they are treated as digital content or images. However, the term virtual goods on its own lacks clarity and precision so must be further specified by stating the content to which the virtual goods relate (eg downloadable virtual goods, namely, virtual clothing)."
• The next edition of the Nice Classification "will incorporate the term downloadable digital files authenticated by non-fungible tokens in Class 9. NFTs are treated as unique digital certificates registered in a blockchain, which authenticate digital items but are distinct from those digital items. For the Office, the term non fungible tokens on its own is not acceptable. The type of digital item authenticated by the NFT must be specified."

The EUIPO goes on to say that services relating to virtual goods and NFTs will be classified in line with the established principles of classification for services. This means that eg retail services for virtual goods would be in class 35. The EUIPO's approach is set out in the 2023 draft Guidelines which are open to comment until 3 October 2022. 

For more on the IP implications of NFTs and the metaverse, see our series of articles including To the Metaverse and beyond – the importance of trade mark protection in the virtual world and The first NFT copyright decision in China.

The EU General Court has dismissed Apple's appeal against the revocation of its THINK DIFFERENT EUTM registration. The mark had not been put to genuine use, having only been used on the packaging of Apple's iMac computers in the form of an advertising statement, not as an indication of origin.

The Court commented that, "…the word elements ‘think different’ do not appear on the labels affixed to the box packaging in a way which particularly draws the consumer’s attention. …those word elements are placed under the technical specifications … and just above the barcode in a relatively small character size. That expression is, moreover, accompanied by the word ‘macintosh’ of the same size and written in the same font."

It concluded that, "…the way in which the contested marks are used on iMac computer packaging does not ground the conclusion that they have been used as trade marks, that is to say, in accordance with their essential function of giving an indication of the commercial origin of the goods concerned."

The UK government has responded to its recent call for views on possible reform of the UK designs system. The call for views covered various topics including the introduction of pre-registration examination and opposition procedures, the clarification of the disclosure requirements for supplementary unregistered designs (SUDs) and the introduction of criminal sanctions for infringement of unregistered designs.

The government has now said that it will consult further on several issues. Those who rely on unregistered designs in the UK and EU (such as the fashion industry) will be relieved to hear that the government will consult on clarifying the disclosure requirements for SUDs. At present, it is unclear whether designers can benefit from both SUDs and Unregistered Community Designs for the same design. The government will also investigate options to simplify the designs system - particularly the unregistered designs system - and the need for reform or guidance on the relationship between copyright and designs.