December 2003
Nestle and Mars Get On Their High Horses over Polo
Neslte and Mars UK have had a fractious relationship in the past and, once again, their argument has ended up in the courtroom. This time the source of the conflict is the popular mint with a hole, Nestle's Polo mint.
The case concerned a trade mark application by Nestle for the shape of the mint. Nestle wanted to register a three-dimensional mark for the shape, without the word "Polo" appearing on the mint. Mars objected to this on the basis that the shape was not enough on its own to distinguish the mint from other confectionery and, as the shape was in common usage already, it should not be registered.
The Hearing Officer at the Patent Office held that the shape could be registered as a trade mark if it made clear that the colour of the mark would be white and that the shape and the hole would be of a certain size.
Both parties were unhappy with this decision. Nestle felt that the amendments were not required to give the mark distinctiveness, and Mars objected that the amendments were material changes to the mark, and that they should be permissible.
The case came before Mr Justice Lloyd sitting in the Chancery Division. Although he agreed that there was a power to make amendments to trade mark applications, he decided in Mars' favour as he felt that the amendments were too significant and were as a result prohibited by trade mark legislation.
BRIFFA Comment:
Three-dimensional trade marks are preferable to registered designs as they can last indefinitely. This is why applications for three-dimensional trade marks continue to be popular. Applying for trade marks on the basis of the shape of an object can, however, be a difficult task.
A famous case involving Philips' attempt to register a mark for the triple headed electrical razor was unsuccessful as the formation of the heads on the razor were integral to the product's technical function. Similarly, it is difficult to register the non-technical aspects in a product as a trade mark where those aspects are commonplace in the market in which that product is sold. In the case described above, the Hearing Officer suggested amending the application because a hoop-shaped sweet lacks the distinctiveness required in a trade mark.
In order to avoid these problems care needs to be taken when applying to register three-dimensional shapes as trade marks.