Three-dimensional shapes as Trade Marks
There is now much focus on applications to register trade marks consisting of the shape of the goods themselves. Such a concept has been embraced by many fields of trade and particularly within the confectionery industry. Applications by confectionery manufacturers for registration of the shape of their products have highlighted some of the difficulties encountered in ensuring that the sign applied for is clearly defined from the outset.
A decision of the UK Court of Appeal concerning an application by Nestlé to register the shape of the Polo mint provides a good illustration of this.
In 1994, Nestlé applied to register a trade mark for "sugar confectionery". The mark was described as "the three-dimensional shape represented above", referring to a black and white photograph of the familiar shape of the Polo mint without the word "Polo" embossed on it. Mars, the well-known rival of Nestlé, objected to the registration of the mark on the basis that the sign shown in the application was not distinctive: there being no limitation in the representation of the mark applied for to size nor colour of the shape.
Initially, the UK Trade Marks Registry considered the objection in the light of Nestlé's reputation in the Polo mint. It decided that the mint buying public would in fact recognise Nestlé's mint from its shape, although there were certain qualifications to be observed.
The registry found that the reputation lay in the shape being white and of a specific size, so the representation of the mark needed to be limited accordingly. Also, the description of goods was deemed to be too wide because it could have covered anything from sweets and chocolate to cakes and biscuits. A limitation of the list of goods from "sugar confectionery" to "mint flavoured compressed confectionery" was therefore required by the Registry.
The decision however satisfied neither party and Mars filed an appeal against the Registry's decision to allow the amendment. At the same time, Nestle appealed against the need to limit the mark at all. The case was next taken to the High Court where it was decided that placing restrictions on the size and colour of the mark would create a different mark from that contained in the application as originally filed. Under this analysis, the amendment of the representation was disallowed and the application was refused for lack of distinctiveness of the mark applied for.
Although Nestlé appealed, the decision of the High Court was upheld by the Court of Appeal.
The loss of Nestlé's application was not because its Polo mint was not acting as a trade mark - it was a combination of Nestlé seeking a larger monopoly than that to which it was entitled and the strict limitations on the changes that can be made to a trade mark as represented in an application.