On April 15, 2019, the Supreme Court of the United States denied the petition for certiorari filed by the St. Regis Mohawk Tribe.
On July 20, 2018, the Federal Circuit upheld a finding by the Patent Trial and Appeal Board (PTAB) in St. Regis Mohawk Tribe v. Mylan Pharms. Inc., 896 F.3d 1322 (Fed. Cir. 2018) that tribal immunity did not extend to the agency proceeding before the PTAB known as an inter partes review (IPR). Id. at 1329. In doing so, the Federal Circuit compared the IPR process to agency enforcement actions and district court proceedings.
The Federal Circuit noted that the director of the PTAB has discretion regarding whether or not to institute an IPR and found that “if IPR proceeds on patents owned by a tribe, it is because a politically accountable, federal official has authorized the institution of that proceeding.” Id. at 1327.
At the end of the day, the Federal Circuit found that an IPR proceeding is distinct enough from a district court proceeding such that the tribal immunity defense that is permitted in an Article III court does not apply to PTAB proceedings. By denying St. Regis’s petition, the Federal Circuit opinion stands as the final determination on this issue.
On April 10, 2019, the Federal Circuit issued a precedential opinion, at the request of the U.S. Patent and Trademark Office (USPTO), regarding submissions of webpages as specimens of use. In re Siny Corp is an important reminder to applicants and practitioners to carefully consider whether webpage specimens to be submitted to the USPTO actually comprise the offering of goods and/or services at the point of sale, or whether they are mere advertising.
In an important footnote, the Federal Circuit reminds us that the webpage specimen at issue here is unlike the one usually found in online marketplaces, where goods are available for immediate purchase. Here, the webpage specimen did not include essential information for consumers to make a purchase. It lacked: (i) a price or range of prices for the goods (ii) minimum quantities (iii) payment options, and/or (iv) shipping information.
Instead, the webpage merely displayed a notice directing consumers to a phone number and email address “For sales information.” The Trademark Trial and Appeal Board, in its earlier finding assumed that this webpage would connect a prospective customer to sales personnel, but “if virtually all important aspects of the transaction must be determined from information extraneous to the web page, then the web page is not a point of sale” display and is not an acceptable specimen of use. Instead, the Board considered the webpage printout as mere advertising, and the Federal Circuit agreed.
Trademark owners should not panic. Webpages that do make goods and/or services available for purchase on the webpage itself will continue to be accepted as proper specimens (depending, of course, on the nature of the webpage at issue).
While still an emerging technology, more companies are implementing blockchain technology to manage supply chains, track goods, prevent counterfeiting, increase security, and ensure traceability. In a recent survey of global leaders, by auditing and financial services company KPMG, 48% of respondents stated they believe it is highly likely that blockchain will change the way their companies do business over the next three years, and 41% stated their company intends to implement blockchain technology during the next three years.
Fashion and luxury brand owners are turning to blockchain technology to prove the authenticity of their goods. Recent reports state LVMH, which owns over 60 luxury brands, will soon use blockchain technology to secure its Louis Vuitton and Parfums Christian Dior goods, with other LVMH brands to follow. LVMH is collaborating with software technology Company ConsenSys to develop this blockchain technology and intends to promote its technology on a “white label” basis with the option for competitors to join.
VeChain has collaborated with fashion brands such as H&M, Babyghost, and Reebonz to develop digital tags that use blockchain technology to secure supply-chain tracking and help customers verify manufacturing information and authenticity.
Food traceability is another key use of blockchain technology. IBM’s blockchain-based food tracking network, Food Trust, has been joined by Nestle SA, Walmart, Unilever, and Carrefour. Carrefour, a French multinational retailer, initially used blockchain technology to ensure traceability of its line of chicken products, and recently announced that it would expand the technology to milk and other food products. In addition, South Korea has announced a pilot project to provide blockchain traceability of beef. Scottish whisky distiller William Grant also recently commenced a blockchain project to track its products.
At the April 3 program Implementing Blockchain: Navigating the Future with Distributed Ledger Technology hosted at K&L Gates’ Chicago office there were presentations by IBM’s Dan Spillane, Director – Growth Initiatives which discussed Food Trust as well as other blockchain solutions offered by IBM, and by Ed Honour, Chief Technology Architect, Tritanium Labs PTE Ltd,. another vendor that offers a traceability blockchain application for products.
On 27 March 2019, the European Parliament approved, with a vote of 348 to 274, the new Directive on Copyright in the Digital Single Market (the “DSM”) which will significantly tighten copyright on the internet.
While the new Directive has been hailed by record labels, artists and media companies as a move to fairly compensate artists, many tech firms like Google and Reddit, and internet activists argue that it will restrict and even destroy user-generated content, with Google stating that it would “harm Europe’s creative and digital industries.”
Although large parts of the DSM are uncontroversial, two elements (Article 11 and Article 13) have prompted much of the debate. Article 11 (dubbed the “link tax”) requires websites to pay publishers a fee for displaying extracts of copyrighted content or even having links to it, a move that is likely to greatly effect search engines and news aggregated platforms amongst many others.
Article 13 (dubbed the “upload filter”) effectively makes digital platforms (such as Facebook, YouTube and Reddit) responsible for any copyright infringements which occur on their platform. While tech companies, such as YouTube, already remove music and videos which are copyrighted, the DSM will make them liable for any copyrighted material that ends up on their site. It should be noted that Article 13 does exclude cloud storage services and pre-existing exceptions, including parody, which (to the relief on many) would likely include memes and GIFs!
Now that the European Parliament has approved the DSM, it will need to be formally endorsed by the Council of the European Union and then published (which will occur in the coming weeks). Each EU Member State will have to write the new Directive into their national laws over the next two years. As with all directives, the rate of transposition is dependent on the individual Member States and the rate is likely to be linked to how strongly they support the Directive, so it will be interesting to see how Italy, Poland, Luxembourg, the Netherlands and Finland (who all opposed they DSM) respond.
On 12 February 2019, car manufacturer (and globally recognised car brand) BMW was granted summary judgment in its claims for passing-off and trade mark infringement against BMW Telecommunications Ltd and Benjamin Michael Whitehouse (the sole director of BMW Telecommunications Ltd). The respondents were a consultancy business providing services for railway signaling and telecommunications.
The facts and arguments Following the incorporation of BMW Telecommunications Ltd by Mr Whitehouse (whose initials were BMW), BMW issued the High Court proceeding seeking declarations and injunctions (even though the company’s name had since been changed).
In support of its allegations of passing off, BMW argued that that by including the initials ‘BMW’ in the name of BMW Telecommunications Ltd it would inherently lead to a misrepresentation that it was associated with the claimant. In support of its claim of trade mark infringement BMW relied on its ‘BMW’ word trademark for goods and services including vehicles and telecommunications.
In its defence the respondents argued that the company name was never advertised, but only used by the second defendant to invoice the rail companies for whom he had worked, so there would be no confusion.
The decision In finding for BMW, the Court followed the earlier decision in British Telecommunications Plc v One in a Million Ltd  1 W.L.R. 903 in which registering domain names including then names of well-known companies was held to lead to a likelihood of false representation that the defendant was connected with the owner of the goodwill in the corporation names. While the BMW case concerned company names rather than domain names, the principles were equally applicable according to the decision of His Honour Judge Hacon.
The Court also considered that even if the defendant’s clients had not assumed association (as alleged by the defendants), if a substantial proportion of the public, when consulting the companies register and seeing the company’s name, would believe that there was no association with the claimant. The Court held that as BMW was a famous brand there would be no need for specialist evidence to establish the impression conveyed when consulting the register and that such confusion would arise. Accordingly, the claimant was granted summary judgment on passing off and trade mark infringement.
Conclusion This case, whilst somewhat fact specific, should provide reassurance and comfort to brand owners (particularly those with global reach and notoriety) that the potential protection of their name can be wide ranging (and the mere registration of a company name could infringe their rights).
March 4, 2019, marked the first time in over 100 years that the Supreme Court of the United States issued two copyright decisions in the same day – both unanimous and both strict interpretations of statutory language. In the first of these two decisions, the Supreme Court unanimously held in Fourth Estate Public Benefit Corporation v. Wall-Street.com that copyright owners must obtain a registration from the U.S. Copyright Office prior to filing an infringement action. The Court, in an opinion authored by Justice Ruth Bader Ginsburg, resolved a long-standing circuit split on whether the “application approach” (merely filing a copyright application) or the “registration approach” (obtaining a copyright registration) is sufficient to file a copyright infringement suit under § 411(a) of the Copyright Act of 1976. In the second decision, the Court in Rimini Street, Inc. v. Oracle USA, Inc. determined that “full costs” under § 505 of the Copyright Act did not authorize awarding litigation expenses beyond those specified in the general costs statute.
Given the Supreme Court’s Fourth Estate decision, there should be a flood of copyright applications at the U.S. Copyright Office given the low cost to file and average seven-month wait time to receive registration. Upon registration of the copyright, a copyright owner can recover for infringement that occurred both before and after registration. Expedited registration is available; however, even expedited processing may not provide a registration quickly enough for preliminary injunctive relief for works that do not qualify for Section 408(f)’s exception for works such as music and movies that are vulnerable to pre-distribution infringement.
Due to the unpredictability of knowing when someone will infringe a copyrighted work and the need to halt infringement in a timely manner, it is typically in the copyright owner’s best interest to routinely file copyright applications for any work of economic value with the potential to be infringed. Not only would routine registration set the stage for taking immediate action against infringers and seeking a preliminary injunction before extensive distribution and damage can be done, it also is a prerequisite for statutory damages and attorney fees, which are permitted only for registrations within three months of first publication of the work or before infringement. Otherwise, only provable compensatory damages within the limitations period are recoverable.
As noted above,
in the second of the two decisions, the Court in Rimini Street, Inc. v. Oracle USA, Inc. determined that “full
costs” under § 505 of the Copyright Act did not authorize the appellate court
to award litigation expenses beyond those specified by Congress in the general
Prior Circuit Split and Fourth Estate Case Background
Section 411(a) of the Copyright Act of 1976 provides that “no civil action for infringement of the copyright in any United States work shall be instituted until…registration of the copyright claim has been made in accordance with this title.” The Ninth and Fifth Circuits followed the “application approach,” finding that a filed copyright application was sufficient to file a copyright infringement suit. The Tenth and Eleventh Circuits followed the “registration approach,” finding that registration of a work at the U.S. Copyright Office is required before commencing an infringement suit. The “application approach” was more favorable to copyright plaintiffs because the U.S. Copyright Office can take several months, and at times, more than a year, to issue a registration in the normal course (non-expedited).
Fourth Estate Public Benefit Corp., a journalism collective, filed a
copyright infringement claim against Wall-Street.com for reposting its articles
without permission. Fourth Estate’s
articles were not registered at the U.S. Copyright Office. The district court found that registration
was required prior to commencing suit, and dismissed the complaint. Fourth Estate appealed, and the Eleventh
Circuit affirmed. Fourth Estate then brought
this case to the Supreme Court arguing in favor of the “application
approach.” The Court granted certiorari.
Supreme Court Fourth
In interpreting § 411(a), the Court focused on the phrase “registration…has been made.” The Court opined that this statutory requirement “permits only one sensible reading: that the Copyright Office’s act of granting registration and not the copyright claimant’s request for registration determines whether registration…has been made.”
The Court also found worth mentioning that Congress previously has not eliminated § 411(a)’s registration requirement despite additional revisions to § 411(a), including removal of foreign works from the section in order to comply with international treaties, as well as § 408(f)’s preregistration option for certain works. Section 408(f) provides limited exceptions where copyright owners may file an infringement suit before receiving registration, including circumstances involving a “live broadcast” or works vulnerable to pre-distribution infringement, such as movies or musical compositions. The Court determined that “§ 408(f)’s preregistration option…would have little utility if a completed application constituted registration,” further supporting Congress’s intent to require registration prior to commencing an infringement suit.
In Rimini Steet
v. Oracle, the CourtDefined
Recoverable Costs in Copyright Litigation
The Court’s strict interpretation of language approach in Fourth Estate,interpreting the word “registration” to mean exactly that, registration and not application, is also seen in the Court’s Rimini Street, Inc. v. Oracle USA, Inc. decision, issued unanimously on the same day as Fourth Estate. In Rimini Street, the Court determined that “full costs” under § 505 of the Copyright Act did not authorize the appellate court to award litigation costs beyond those specified by Congress in the general costs statutes applicable to all federal court actions. Rather, “‘full costs’ are all the ‘costs’ otherwise available under the law.” Those costs consist only of the six categories specified in 28 U.S.C. §§ 1821 and 1920, essentially (1) clerk and marshal fees, (2) transcript fees, (3) printing and witness fees and costs, (4) exemplification and copying fees, (5) docket fees, and (6) compensation of court-appointed experts and interpreters. At trial, a jury agreed with Oracle that Rimini Street, while providing software support services to Oracle customers, copied Oracle‘s software without authorization. The Ninth Circuit allowed Oracle to recover $12.8 million in litigation expenses, as well as $3.4 million in costs and $28.5 million in attorney’s fees, in addition to the jury award of $35.6 million for copyright infringement and $14.4 million for violation of state computer access statutes. Although Rimini Street lost its copyright infringement case to Oracle, its successful appeal of the Ninth Circuit’s allowance of litigation expenses saved it $12.8 million.
Conclusion and Recommendations
Content owners in the publishing, music, television, film, photography, and videogame industries routinely file copyright registration to protect the content they create and distribute. Routine registration in the software technology industry sector and other areas is less prevalent. For software, as for other types of content, the requirements are not onerous and also allow for the protection of confidential source codes. Oracle’s recent Supreme Court defeat should not distract us from noticing that even in that defeat Oracle did receive an award of $28.5 million in attorneys’ fees and $3.4 million in costs (together, nearly equaling the copyright infringement damages award) noted above in the Rimini Street decision. The award of that $31.9 million was possible only because Oracle had timely registered its software.
Others who may benefit from routine registration include any entity that creates original materials such as internal training manuals and product user manuals which may be copied and misused by ex-employees, distributors, or customers. Any of these works can be registered with trade secret material protected from public filing and disclosure. Also, many fashion companies regularly create seasonal designs used on handbags or clothing. These designs include floral prints, animal designs, and other pictorial features and arrangements of text seen on handbags and clothing. Many companies also own trademarks or packaging designs that also may be protectable through copyright. Given the frequency with which certain notorious infringers in the industry create replicas of these designs, companies should be armed and ready with copyright registrations for these designs.
An initial cease
and desist letter to an infringer containing proof of copyright registration
demonstrates that the claim may be filed in court, providing leverage to the
copyright owner. Companies and other
creators should consider routine copyright application filing to protect their
valuable assets without loss of time and damages waiting for registration to
occur after the infringement is discovered.
 The cost to file a copyright application is relatively
low (approximately $55 for a standard electronic filing fee) and the average
time to registration is a relatively long wait for a copyright registration at
the U.S. Copyright Office (on average six to nine months if not expedited, and
currently at seven months).
“If the source code does
contain trade secrets, you must indicate in writing to the Office that the code
contains trade secret material. Using one of the following options, submit a
portion of the code for the specific version you want to register:
One copy of the
first ten pages and last ten pages, blocking out none of the code;
One copy of the
first twenty-five pages and last twenty-five pages, blocking out the portions
of the code containing trade secret material, provided the blocked out portions
are less than fifty percent of the deposit;
One copy of the
first twenty-five pages and last twenty-five pages of the object code for the
program, together with ten or more consecutive pages of source code, blocking
out none of the source code (see subheading about object code below);
If the source code
for the entire program is fewer than fifty pages, one copy of the entire code,
blocking out the portions of the code containing trade secret material,
provided the blocked out portions represent less than fifty percent of the
If the source code
does not have a precise beginning, middle, or end, twenty to fifty pages that
reasonably represent the first and last portions of the code.”
 See 37
C.F.R. §202.20 (deposit of copies and phonorecords for copyright registration).
Judge Bryson of the Federal Circuit, sitting by designation in the Eastern District of Texas, issued one of the clearest articulations to date in favor of granting a stay pending inter partes review. Notably, in this case, claim construction had ended, discovery was nearly complete, and trial was set to begin in three months. The defendant, Samsung, had recently joined an instituted IPR covering six of the eleven asserted claims and moved to stay the district court proceeding.
Judge Bryson clearly articulated the three factors that district courts consider when analyzing whether or not to grant a stay: 1) whether the stay will unduly prejudice the non-moving party; 2) whether the proceedings had reached an advance stage, including the stage of discovery and whether a trial date is set; and 3) whether the stay will likely result in simplifying the case before the court.
After noting that the congressional intent of post-grant review before the patent office was to be a “quick and cost effective alternative to litigation” to provide a “faster, less costly alternative to civil litigation to challenge patents” and to be “an inexpensive substitute for district court litigation that allows key issues to be addressed by experts in the field” he proceeded to walk through the three factors.
Prejudice Judge Bryson noted that the interest in “prompt enforcement of patents is entitled to weight” but that it is a factor that is present in every case where a patentee opposes a stay and “it is therefore not sufficient, standing alone, to defeat a stay motion.” As a non-practicing entity, a damages award post-stay would still fully compensate the plaintiff for any injury it suffered. Judge Bryson further noted that while Samsung had waited until after institution to request a stay, this could not factor against the stay as “it would have been virtually pointless for Samsung to have sought a stay before the IPR was instituted, as this Court would have almost certainly denied it.”
Further, while the parties had continued trial preparation in the absence of a stay, such efforts had inevitably moved the parties “preparation for the court case closer to completion for the time when the IPR is concluded and th[e] litigation resumes.” Notably, the plaintiff had consented to stays in other co-pending cases, which undercut the plaintiff’s argument that it would be prejudiced by a delay. While there may have been some prejudice to the plaintiff, a delay of disposition, it was only a minor factor cutting against the stay.
State of the Proceedings While trial was only three months away and discovery was nearly complete, Judge Bryson noted that “the most burdensome parts of the case—filing and responding to pretrial motions, preparing for trial, going through the trial process, and engaging in post-trial motions practice—all [lay] in the future.” Indeed, stays had been granted much closer to trial, as Judge Bryson pointed to a number of cases that were stayed three weeks before trial, ten weeks before trial, eight weeks before trial, and seven weeks before trial. While much work had already been done, Judge Bryson noted that “[d]enying a stay because of the progress of the case to this point would impose significant expenses on the parties that might be avoided if the stay results in the simplification of further court proceedings.” This factor also ultimately weighed slightly against a stay.
Simplification of the Issues Judge Bryson was most clear however, that the “most important factor bearing on whether to grant a stay is whether the stay is likely to simplify issues at trial.” Regardless of how the IPR was resolved, a large portion of the litigation would fall away: either the PTAB confirms validity of certain claims and the estoppel provisions of 35 U.S.C. 315(e)(2) prevent certain validity challenges, or some or all of the claims are cancelled. Despite not all asserted claims being in IPR, Judge Bryson was comfortable saying that resolution one way or the other on what asserted claims were instituted would indeed simplify the case for trial. He noted that the case involved complex technology and the potential for the removal of one of the asserted patents heavily favored simplification.
Further, “the expertise of the PTAB judges in th[e] field of art is likely to be of considerable assistance to the Court in this complex case.” Indeed, any guidance from the USPTO “regarding validity of the patents would be of invaluable assistance to this court.” Judge Bryson, a Federal Circuit judge, recognizes that a duplication of efforts between a jury and the expertise of the patent office is a waste of efforts.
The weighing of the factors resulted in two factors slightly favoring against a stay (as would normally be the case late in the life of the case) and one factor heavily favoring for a stay (as is also normally the case where any asserted claims are instituted). In view of the totality of the circumstances, Judge Bryson concluded that a stay was warranted. His guidance is particularly useful for Petitioners at all stages of litigation who are seeking to stay their ongoing district court litigation while their IPR challenges navigate the patent office.
A recent decision by the Court of Milan found that a trade mark owner who had consented to products being sold in the European Economic Area (EEA), but only through authorised retailers, could make a claim for trade mark infringement where the product was sold by an unauthorised retailer. This case highlights the effectiveness of implementing a selective distribution system for product manufacturers looking for new ways to protect their brand.
Background Landoll S.r.L, an Italian manufacturer of professional cosmetics bearing the trade marks NASHI and NASHI ARGAN, sells its products through a selective distribution system. Essentially, retailers are only authorised to sell Landoll’s products if they meet certain criteria such as that the products must be applied by trained beauty professionals. Landoll successfully obtained a preliminary injunction to stop a retailer who had not been authorised under these criteria making sales via its website and via a third party online marketplace.
Trade Mark Rights and Selective Distribution The principle of exhaustion provides that a trade mark owner may not oppose the further commercialisation of goods that bear their trade mark and are distributed in the EEA with their consent, unless there are “legitimate reasons” to do so. The retailer argued that, under this principle, it was entitled to sell the NASHI products in the EEA.
The Court of Milan found, applying the Coty judgment of the Court of Justice of the EU, that Landoll had implemented a legitimate selective distribution system, limiting the distribution of its products to authorised dealers in order to safeguard the brand of its products. It also found that the retailer’s actions resulted in actual harm to the NASHI brands. On this basis, the court found that there was a “legitimate reason” preventing the operation of the exhaustion principle.
Outcome The Court ordered withdrawal of the products from the market along with an order for publication of the injunction on the reseller’s website for 30 days. As this was a preliminary injunction decision, there is no final decision on the matter as yet. However, this judgment will be persuasive for other courts applying EU trade mark law and we expect the reasoning to be followed in similar actions.
The decision is good news for trade mark holders who already have a selective distribution system in place, as it establishes that such holders may use their IP rights to limit unauthorised sales as well as through competition law. For trade mark holders who do not operate such a distribution model, this case provides a clear illustration as to why they should consider whether changes to their models may be appropriate in order to ensure their branded products are adequately protected.
An Act on financial support for audiovisual production was published in the Journal of Laws on 10 January 2019. The Polish Film Institute (PISF) will soon provide financial support for the production of audiovisual works created in Poland.
The new scheme provides for a modern support system and improvement of the conditions for the functioning of the audiovisual industry in Poland. Its aim is to strengthen the position of the Polish audiovisual sector on the international market, increase the competitiveness of domestic companies operating in the sector, and, in the long run, attract foreign investments into Poland.
Audiovisual producers, co-producers or service providers for the production of audiovisual works will be able to submit an application to the PISF. After a formal evaluation and a so-called qualification test encompassing the criteria prescribed in the act, the PISF will conclude an agreement with the producer that will guarantee reimbursement of part of the eligible costs incurred. Financial support will be granted in the amount of 30% of eligible costs; however, this sum cannot exceed 80% of the total costs of the audiovisual production.
Support can be granted to Polish producers, co-producers or service providers, as well as to EU/EFTA producers, provided that they open a branch office in Poland.
Under the Act, service providers can qualify for support only if neither the producer of the audiovisual work nor any of the co-producers is based in the Republic of Poland.
The financial support will only be granted once the production or a part of it has been completed and all costs associated therewith have been incurred by the producer, as well as after an audit of the documentation by an independent audit firm. In order to receive financial support, the audiovisual producer should incur certain eligible costs in Poland. Only on the basis of actual costs incurred in Poland will the producer be able to receive a refund. It is also important that before receiving the support, the producer is obliged to pay taxes related to the audiovisual production in Poland.
The criteria for obtaining financial support includes:
using Polish or European cultural heritage in the audiovisual work
placing the plot of the audiovisual work in Poland
placing the production of the audiovisual work in Poland
hiring Polish employees as part of the production and/or as part of the creative and technical staff, and
using a Polish film infrastructure.
Only applicants who pass the above test (and having obtained at least 51% of the points available) may receive financial support for audiovisual productions.
The annual budget for subsidies related to the introduced scheme has been set at a maximum level of PLN 200 million (EUR 46 million) for the first year, and similar sums for the subsequent years, with annual inflation adjustments.
The support per calendar year is limited to PLN 20 million (EUR 4.7 million) per applicant and PLN 15 million (EUR 3.5 million) per project.
Pursuant to the act, at least 10% of the amount assigned for financial support by the PISF each year will be allocated to the production of animated films and series.
The new provisions will come into force one month after their publication in the Journal of Laws.
In 2013, in Cadbury v Nestle, the Court of Appeal held that the graphic representation and the description of the purple mark did not constitute a sign within section 1 of the Trade Marks Act but rather an attempt to register multiple signs with different permutations, presentations and appearances, which are neither graphically represented nor described with any precision.
As a result, Cadbury attempted to amend the (same) description of another of its colour marks, registered in 1998 and now at risk of invalidity as a consequence of the Cadbury v Nestle decision. However, both the Comptroller and the High Court denied Cadbury’s request to amend the mark description.
The purple mark was represented and described as follows:
Description The mark consists of the colour purple (Pantone 2685C) as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.
If we consider this description in light of the recent cases like Heidelberger and Red Bull, it is clear that it does not satisfy the Sieckmann criteria, according to which a sign must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
However, the Cadbury trade mark application was filed in 1997 (yes, 22 years ago!) and not only did the mark reach registration but, interestingly, Cadbury followed the guidance of the Registrar at the time by using the term “predominant” in the mark description.
As we know, amendments to registered marks are allowed in limited circumstances, such as when a trade mark is filed as a series mark according to section 41 of the Trade Mark Act.
Therefore, Cadbury argued that its purple mark was actually a series of marks. Although this indication was absent in its trade mark application, Cadbury stated that the mark description contained two alternative marks (i.e. “colour applied to the whole visible surface OR being the predominant colour”) and, as a result, the marks were inevitably part of a series, one of which could be deleted.
By contrast, the Comptroller submitted that Cadbury’s mark did not satisfy the requirement of a series mark and a different conclusion would impact the nature and scope of a trade mark registration.
Decision of the Court of Appeal The engaging reading of the Court of Appeal decision reaches the conclusion that Cadbury intended to register a single mark, and that this falls foul of the requirements of clarity and precision.
Floyd LJ agreed with the Comptroller that any other decision would introduce uncertainty to the trade marks register and difficulty in examining trade marks in the future.
Main Takeaway This case reminds us that while a time machine would certainly be helpful to address uncertainties in the law from the past, in absence of one, a creative argument may not be sufficient to adapt to the developments of trade mark law.
This case naturally raises questions about the reliability of Registrar guidance in the long run and it confirms that a trade mark is meant to grant a monopoly and, consequently, its examination (especially if it is a non-traditional mark) must be in compliance with the principle of legal certainty.