The Court of Appeal has dismissed a supermarket chain’s appeal against a decision of the Intellectual Property Enterprise Court (IPEC) upholding the validity of a trade mark it was alleged to have infringed.
The mark was registered for goods and services including specified foods and drinks, and was described in the registration as a gold oval with embossed writing, with black and gold colours. The company that owned the mark claimed that the supermarket chain had infringed it. The supermarket chain brought a counterclaim for a declaration of invalidity.
The supermarket chain argued that the mark lacked clarity and precision, claiming that its pictorial representation and description were inconsistent in terms of which parts should be embossed. It also pointed to the absence of specific colour hues. Upholding the validity of the mark, however, the IPEC found that, although other parts of the mark were shown to be embossed in the pictorial representation, the embossing effect would be understood to be of principal significance in relation to the letters on it. The absence of precise colour hues did not mean that the mark had multiple forms. The IPEC concluded that the mark, at the time it was registered, satisfied the requirements of Section 1(1) of the Trade Marks Act 1994 and had been validly registered.
In its appeal against that decision, the supermarket chain argued that, in considering whether the mark was capable of distinguishing the goods or services of one undertaking from those of others, the IPEC had applied the wrong test to determine when colour hues must be specified. The Court agreed that the ‘capacity to distinguish’ test had been applied erroneously. The three conditions in Section 1(1) were independent and cumulative, and whether something was a sign and whether it was sufficiently clear and precise were questions that logically preceded whether it had a capacity to distinguish. The Court therefore reconsidered the issues.
The Court largely agreed with the IPEC’s interpretation of the mark. The written description was not inconsistent with the pictorial representation and did not give rise to any ambiguity about what the subject matter of the registration was. It would be understood that the references to black and gold in the written description had been provided to meet the requirement to indicate the colours in words, and that they were intended to describe in words the principal colours in the pictorial representation. The trade mark was thus a sign.
The Court did not agree with the IPEC that the mark was what was shown in the pictorial representation ‘subject to minor variations in hue’. There was nothing in the written description to suggest that the pictorial representation was merely an example of what was claimed or that it included variations in hue. Interpreting the mark in that way did not prevent the company from enforcing it against the use of similar, but not identical, signs, and meant that it was clear and precise. The appeal was dismissed.
