Intellectual Property Enterprise Court

IP-2024-000037 - [2025] EWHC 547 (IPEC)

Fecha: 11-Mar-2025

Figurative and three-dimensional marks featuring colour

Figurative and three-dimensional marks featuring colour

28.

Robert McBride Ltd’s Trade Mark Application [2003] RPC 19 concerned an application for a mark to be registered for cleaning tablets. The proposed mark was graphically represented like this:

29.

The application stated that the above signs were put forward for registration as three-dimensional marks with a claim to the colours yellow and white as indicated. The registrar rejected the application on the ground that the word ‘yellow’ was insufficiently precise. The Appointed Person upheld the objection, finding that the lack of specificity as to hue left the representation lacking the required degree of precision.

30.

The issue in Calor Gas (Northern Ireland) Ltd’s Trade Mark Application SRIS O-340-16 (unrep.) was similar. The applicant had applied to register a series of two signs which were graphically represented in the form of a gas cylinder of the type used to fuel portable gas heaters. The representation was in monochrome and the description was as follows:

‘The Trade Mark consists of the colour yellow applied to the outer surface of the cylinder within which gas is contained.’

31.

The Appointed Person found that the Sieckmann criteria had not been satisfied because of a lack of precision as to colour.

32.

The trade mark in suit in J. Sainsbury plc v Fromageries Bel SA [2019] EWHC 34354 (Ch) was registered in class 29 for cheese. It was stated to be a three-dimensional mark and had the following description:

‘The mark is limited to the colour red. The mark consists of a three-dimensional shape and is limited to the dimensions shown above.’

33.

This was the visual representation:

34.

The conclusion reached was that the mark could be capable of distinguishing the cheese of the proprietor from that of another trader only if the particular hue of red used on the main body of the product was associated with the proprietor’s cheese:

‘[63] Turning to marks containing colour which are not colour per se marks, it is of course the entire mark, including non-colour elements, which must be capable of distinguishing. However, the colour element may play a part in ensuring that it is and that in turn may depend on the colour being of a particular hue.

…

[67] It seems to me that where a mark contains colour but is not a colour per se mark, the need for precision as to hue will depend on the extent to which other elements of the mark serve to make the mark capable of distinguishing. More exactly, it will depend on the extent to which the colour of the relevant feature of the mark contributes to making the mark capable of distinguishing and whether it is likely that only a particular hue will confer on the mark that capacity to distinguish. It will always be a question of fact and degree.’