Babybel trade mark registration bites the dust

Fromageries Bel S.A. filed a UK trade mark application to register the above mark on 12 March 1996 for cheese. The mark was registered on 29 August 1997.

The mark is described as follows:

"The mark is limited to the colour red. The mark consists of a three dimensional shape and is limited to the dimensions shown above."

J Sainsbury PLC applied to invalidate that trade mark registration. The original grounds for invalidation were that the trade mark does not comply with the requirements of:

• Section 3(1)(a) of the Trade Marks Act 1994 (the "TMA") because the mark consists of the goods themselves in an unadorned red wax/plastic wrapper which is customary in the trade.
• Section 3(1)(b) because the mark consists exclusively of the shape of the goods themselves and is devoid of any distinctive character.
• Section 3(1)(b) because the trade mark is not graphically represented.
• Section 3(1)(c) because it is customary to preserve cheese in wax/plastic wrapping, certain Dutch cheeses are particularly associated with this type of wrapping, the dimensions used in the representation of the mark indicate the amount of cheese in the product; therefore, the mark designates the kind, quality, quantity and/or geographical origin of the goods.
• Section 3(1)(d) because the trade mark consists exclusively of a sign which has become customary in the current language or in the bona fide and established practices of the trade.
• Section 3(2)(a) because the trade mark consists exclusively of a shape which results from the nature of the goods themselves.
• Section 3(2)(b) because the trade mark consists exclusively of a shape which is necessary to achieve a technical result.
• Section 3(2)(c) because the trade mark consists exclusively of a shape which gives substantial value to the goods.

Following a case management conference the applicant dropped its grounds under sections 3(1)(b), (c) and (d). The ground based on s3(1)(a) was amended to a claim that the mark does not satisfy ss.1(1) and 3(1)(a) because it is not graphically represented. The grounds under s3(2) were maintained.

The essential characteristics of the mark are debatable but include the rounded shape of the cheese, a red wax coating, a red colour and a pull tag.

Notably, the Registrar found that the colour red is an essential characteristic of the contested trade mark. The evidence submitted by the applicant for invalidity focused on the fact that cheeses are often produced and sold in a round shape and that wax is a traditional method of preserving cheese.

The limitation of the mark to the dimensions shown in the representation and to the colour red are 'limitations' the effect of which is to restrict the right of enforcement to signs which fall within them.

Ground 1 – s3(2) TMA

S3(2) of the TMA was, on the date these proceedings commenced:

"(2) A sign shall not be registered as a trade mark if it consists exclusively of:

a) the shape which results from the nature of the goods themselves,

b) the shape of goods which is necessary to obtain a technical result, or

c) the shape which gives substantial value to the goods."

Each of these exclusions depends on the trade mark consisting exclusively of the shape of the goods.

As is clear from Lego Juris A/S v OHIM, this is the case where the essential characteristics of the sign relate to a shape. Shapes of a particular size are still shapes. Therefore, the dimensions of the trade mark at issue do not take the mark outside the potential scope of s.3(2).

However, the Registrar's finding that the colour red is an essential characteristic of the contested trade mark does. This is sufficient reason, by itself, to reject the grounds for invalidation based on s.3(2). Due to a lack of evidence provided by the applicant, the Registrar did not find that the mark consisted of a shape that gave substantial value to the goods either.

Therefore, the application for invalidation failed on this ground.

Changes to the law

The Registrar considered the applicability of amendments introduced by the Trade Mark Regulations 2018 which came into force 14 January 2019.

However, it did not consider that the amendments to s.1(1) and 3(2) apply to proceedings which started prior to the new law coming into effect. The Registrar was of the view that it is an established principle of law that changes are not retrospective unless clearly indicated to be so in the legislation (which they are not explicitly).

Ground 2 – s3(1) and s1(1) TMA

Even if the Registrar was wrong about the applicability of amendments to the TMA to this case, the requirement to represent trade marks in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective continues to apply (see recital 13 to Directive EU 2015/2436).

The contested mark does not meet this requirement (not least because it merely describes "the colour red"). Therefore, the removal of the requirement for a graphical representation of the mark is of no assistance to Fromageries Bel S.A with regard to the ground for invalidation based on s.1(1) and s3(1) of the TMA.

The requirement for the mark to be represented in a manner that is clear, precise, self-contained, easily accessible, intelligible, durable and objective existed at the date of the application to register the contested mark. Therefore, the application for invalidation based on grounds under ss.1(1) and 3(1)(a) succeeded.

The trade mark registration was held invalid and will be cancelled.

Case Ref: 0/086/19