Since 1996, the owner of Babybel, Fromageries Bel have had a trade mark registered for its prominent 3D round wax coating with the colour red for its cheese products. This month, the UK Intellectual Property Office (UKIPO) issued a ruling invalidating the trade mark covering the red coating for Babybel cheese products. This trade mark was challenged by supermarket chain Sainsbury’s.
Sainsbury’s filed an invalidity application with the UKIPO on the grounds that the colour specified in the Babybel trade mark registration was ‘ambiguous’. It was argued that there was a mismatch between the verbal description of the trade mark and the colour shown in the pictorial representation of it.
The UKIPO accepted Sainsbury’s points regarding the colour. The description of the mark did not determine the shade of red and it was held that the colour was an essential characteristic of the mark. Defining the colour with the broad description ‘red’ was held to be insufficiently precise and lacked clarity to satisfy the requirement for a graphic representation of the trade mark in accordance with section 1(1) of the Trade Marks Act 1994. The trade mark did not comply with recent case law that the colour had to include a Pantone shade.
The success of this invalidation on the basis of the colour description is not a total shock given that a similar lack of clarity and precision was found in previous rulings, most notably in the Cadbury purple dispute where it was held that colours should reference a Pantone shade.
Colours are valuable brand signifiers however colour trade marks are difficult to protect. This decision is a reminder for all trade mark owners of colour marks. It is important to review all trade mark registrations to ensure that they are still compliant with current case law and to consider new trade mark filings when you mark is subject to potential vulnerability.
Briffa are experts in all aspects of trade mark law and practice. If you have any trade mark or other intellectual property rights that you would like to discuss, please call 020 7288 6003 or email firstname.lastname@example.org to arrange a free meeting.
Written by Noyemie Sahakian, Solicitor