ARTICLE · 11 NOVEMBER 2013

Cadbury's Scrabbling For Clarity

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Two recent Court of Appeal judgments remind trade mark applicants to take great care in drafting applications particularly where 'non-standard' trade marks are concerned.

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Elizabeth Dunn

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Two recent Court of Appeal judgments remind trade mark applicants to take great care in drafting applications particularly where 'non-standard' trade marks are concerned. Under current legislation the definition of a 'sign' which may be registered as a trade mark is wide. In practice, judges are wary of granting monopolies in more 'exotic' marks unless their scope is carefully delineated.

In Societe Des Produits Nestle S.A. v Cadbury UK Ltd , Cadbury's UK registration for the colour purple was cancelled, and in JW Spear & Son Ltd, Mattel Inc and Mattel UK Ltd v Zynga Inc. the cancellation of Mattel's application to register a Scrabble tile as a trade mark was upheld. The court was required to interpret Article 2 of the EUTrademarks Directive 2008/95 in both cases.

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