CA-2025-000801 - [2025] EWCA Civ 1341

In Case C-273/00 Sieckmann [2002] ECR I-11754 the CJEU held at [44]-[45] that the list of examples of signs in Article 2 is not exhaustive, and therefore a trade mark may consist of a sign which is not itself capable of being perceived visually, provided that it can be represented graphically. Accordingly, an odour can be a sign. The same applies to sounds: see Case C-283/01 Shield Mark BV v Josst Kist h.o.d.n. Memex [2003] ECR I-14329 at [35]-[37].

The CJEU has also held that both (i) a single colour which is not spatially defined and (ii) a combination of colours which is not spatially delimited are capable of being a sign: see Libertel and Heidelberger Bauchemie.

In relation to a single colour, the CJEU said in Libertel at [27]:

“… a colour per se cannot be presumed to constitute a sign. Normally a colour is a simple property of things. Yet it may constitute a sign. That depends on the context in which the colour is used. Nonetheless, a colour per se is capable, in relation to a product or service, of constituting a sign.”

In Heidelberger Bauchemie the applicant had applied to register a mark which was represented by a rectangular piece of paper, the upper half of which was blue and the lower half of which was yellow, and which was described as follows:

“The trade mark applied for consists of the applicant’s corporate colours which are used in every conceivable form, in particular on packaging and labels.

The specification of the colours is:

RAL 5015/HKS 47 – blue

RAL 1016/HKS 3 – yellow.”

The CJEU dealt with the first condition as follows:

“23.

As the Court has already held, colours are normally a simple property of things (Libertel, paragraph 27). Even in the particular field of trade, colours and combinations of colours are generally used for their attractive or decorative powers, and do not convey any meaning. However, it is possible that colours or combinations of colours may be capable, when used in relation to a product or a service, of being a sign.

24.

For the purposes of the application of Article 2 of the Directive, it is necessary to establish that in the context in which they are used colours or combinations of colours which it is sought to register in fact represent a sign. The purpose of that requirement is in particular to prevent the abuse of trademark law in order to obtain an unfair competitive advantage.”

It appears from the judgment, in particular [33]-[35] quoted in paragraph 30 below, that the CJEU regarded the fact that the mark consisted of colours “which are used in every conceivable form” as a factor that was primarily relevant to the second condition rather than the first condition. Nevertheless, the Court’s ruling was that:

“Colours or combinations of colours which are the subject of an application for registration as a trade mark, claimed in the abstract, without contours, and in shades which are named in words by reference to a colour sample and specified according to an internationally recognised colour classification system may constitute a trade mark for the purposes of Article 2 of [the Directive] where:

– it has been established that, in the context in which they are used, those colours or combinations of colours in fact represent a sign, and

– the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way.

…”

In Dyson Dyson had applied to register the following mark:

The CJEU noted in its judgment that:

“19.

As Dyson has stated on a number of occasions both in its written observations and at the hearing, and as the national court itself noted in its order for reference, the application does not seek to obtain registration of a trade mark in one or more particular shapes of transparent collecting bin – the shapes represented graphically on the application form being only examples of such a bin – but rather to obtain registration of a trade mark in the bin itself. It is, moreover, common ground that those marks consist not of a particular colour, but rather in the absence of any particular colour, namely transparency, which enables the consumer to see how much dust has been collected in the collecting bin and to know when the bin is full.

20.

It follows that the trade mark application in the main proceedings covers all the conceivable shapes of a transparent collecting bin forming part of the external surface of a vacuum cleaner.”

The Court held that this did not satisfy the first condition for the following reasons:

“35.

In the present case, it is common ground that the subject-matter of the application in the main proceedings is not a particular type of transparent collecting bin forming part of the external surface of a vacuum cleaner, but rather, in a general and abstract manner, all the conceivable shapes of such a collecting bin.

36.

In that regard, Dyson cannot maintain that the subject-matter of its application in the main proceedings is capable of being perceived visually. What consumers can identify visually is not so much the subject-matter of the application as two of Dyson’s graphic representations as contained in the application. Those representations cannot be assimilated to the subject-matter of the application because, as pointed out by Dyson on a number of occasions, they are merely examples of it.

37.

It follows that, unlike the applications which gave rise to the judgments in Sieckmann and Shield Mark, the subject-matter of the application in the main proceedings is capable of taking on a multitude of different appearances and is thus not specific. … the shape, the dimensions, the presentation and composition of that subject-matter depend both on the vacuum cleaner models developed by Dyson and on technological innovations. Likewise, transparency allows for the use of various colours.

38.

Given the exclusivity inherent in trade mark right, the holder of a trade mark relating to such a non-specific subject-matter would obtain an unfair competitive advantage, contrary to the purpose pursued by Article 2 of the Directive, since it would be entitled to prevent its competitors from marketing vacuum cleaners having any kind of transparent collecting bin on their external surface, irrespective of its shape.

39.

It follows that the subject-matter of the application at issue in the main proceedings is, in actual fact, a mere property of the product concerned and does not therefore constitute a ‘sign’ within the meaning of Article 2 of the Directive (see, to that effect, Libertel, paragraph 27).”

Dyson was an extreme case on the facts, but the underlying principle is not confined to such extreme facts. This is demonstrated by two decisions of this Court concerning the first condition in appeals that were heard together by the same constitution, which gave judgment in both appeals on the same day.

In J. W Spear & Son Ltd v Zynga Inc [2013] EWCA Civ 1175, [2014] FSR 14 Mattel was the proprietor of a trade mark described as follows: “The mark consists of a three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10”. The registration included a line drawing depicting a tile. Zynga challenged the validity of the registration. At first instance [2012] EWHC 3345 (Ch), [2013] FSR 28 I held as follows:

“The first condition

47.

In my judgment the Tile Mark does not comply with the first condition for the following reasons. As Zynga rightly contends, the Tile Mark covers an infinite number of permutations of different sizes, positions and combinations of letter and number on a tile. Furthermore, it does not specify the size of the tile. Nor is the colour precisely specified. In short, it covers a multitude of different appearances of tile. It thus amounts to an attempt to claim a perpetual monopoly on all conceivable ivory-coloured tile shapes which bear any letter and number combination on the top surface. In my view that is a mere property of the goods and not a sign. To uphold the registration would allow Mattel to obtain an unfair competitive advantage.

The second condition

48.

Even if the Tile Mark complies with the first condition, in my judgment it does not comply with the second condition since the representation is not clear, precise, intelligible or objective. As discussed above, the representation covers a multitude of different combinations. It does not permit the average consumer to perceive any specific sign. Nor does it enable either the competent authorities or competitors to determine the scope of protection afforded to the proprietor, other than that it is very broad.”

This Court endorsed those conclusions and the reasons given for them. 

In Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174, [2014] RPC 7Cadbury had applied to register a mark described as follows: “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”. The description was accompanied by a colour swatch. The application was opposed byNestlé, which prevailed in this Court for the reasons summarised by Sir John Mummery at [55]:

“In brief, the description of the mark as including not just the colour purple as a sign, but other signs, in which the colour purple predominates over other colours and other matter, means that the mark described is not ‘a sign.’ There is wrapped up in the verbal description of the mark an unknown number of signs. That does not satisfy the requirement of ‘a sign’ within the meaning of Article 2, as interpreted in the rulings of the CJEU, nor does it satisfy the requirement of the graphic representation of ‘a sign’, because the unknown number of signs means that the representation is not of ‘a sign.’ The mark applied for thus lacks the required clarity, precision, self-containment, durability and objectivity to qualify for registration.”

It is clear from these authorities that a written description which embraces a multiplicity of signs does not comply with the first condition. Counsel for Babek submitted that (subject to compliance with the second condition) this does not prevent registration of a single sign whose appearance can vary within permissible limits. That submission entails distinguishing between a description which embraces a multiplicity of signs on the one hand and a description of a single sign whose appearance can vary within permissible limits on the other hand. Counsel for Babek did not articulate any bright-line test for making that distinction, but submitted that it was a question of fact and degree. Counsel for Iceland disputed that any variation was permissible. In the alternative he submitted that, if any variation was permissible, the test for what was permissible was whether the differences between variants would go unnoticed by the consumer (i.e. the test for identity of marks and of marks and signs established by the CJEU in Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2799). For reasons that will appear, it is not necessary to determine who is correct about this.