Fromageries Bel, owners of cheese brands including Boursin, Leerdammer and The Laughing Cow, have been dealt a blow by the UK Intellectual Property Office (UKIPO), with their UK trademark registration for the shape of the company’s popular Babybel cheese having been declared invalid.

It has been possible to register non-traditional trademarks, including colors and 3D shapes, for many years. However, the requirements for registration of these types of marks have changed substantially since they were first introduced, with significant attention currently being paid to the precise way in which the marks are defined. As a result, an increasing number of non-traditional trademarks previously considered valid and accepted for registration are being declared invalid when challenged by competitors.

A recent casualty of this trend is Cadbury, whose UK trademark registration for the color purple, which dated back to 1995, had been subject to scrutiny for some time. The UK Court of Appeal confirmed in 2013 that the description Cadbury had used for their purple was too broad, leading to speculation that the trademark was invalidly registered. A later attempt by Cadbury to amend the trademark was unsuccessful, resulting in the registration being surrendered earlier this year.

Bye Bye, Babybel?

Following a challenge by J. Sainsbury Plc, owners of the Sainsbury’s supermarket chain, the Babybel 3D shape has met a similar fate.

Originally filed in March 1996, the trademark consisted of an image of the round Babybel cheese in red wax, with a pull-tag or tear-away strip used to open the wax coating, and dimensions indicating that the shape was 4cm in diameter and 2cm in depth. It was accompanied by the 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”.

Sainsbury’s applied to cancel the trademark on a number of different grounds, including claims that it was not defined in a clear, precise way, and that it consisted exclusively of a shape which results from the nature of the goods themselves, is necessary to achieve a technical result, and gives substantial value to the goods.

The Hearing Officer first considered what the essential characteristics of the Babybel shape are. After hearing submissions from counsel for both sides, he concluded: “I find that the essential characteristics of the contested trade mark are the shape of the goods in the dimensions indicated in the representation of the mark, the protrusions marking up the pull tag, and the colour red”.

Having reached this conclusion, he quickly dismissed Sainsbury’s claims that the mark consisted exclusively of a shape which results from the nature of the goods, is necessary to achieve a technical result, and/or gives substantial value to the goods, since the shape was not considered to be the sole essential characteristic of the mark.

He then moved on to assess whether the combination of the image of the trademark and its description were sufficient to comply with guidance from the Court of Justice of the European Union in the Sieckmann judgement. This stated that trademarks must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective” in order to be registrable.

The Hearing Officer was not concerned that there was only one view of the Babybel cheese presented, since it was clear that the shape was largely symmetrical. He was also happy to accept the dimensions of the shape being included in an image rather than in the mark’s description. However, the remaining aspect of the mark’s description, “The mark is limited to the colour red”, was considered more problematic.

To assess this, the Hearing Officer turned to guidance from the Court of Justice of the European Union in Libertel on how color marks should be represented. The Libertel judgement has generally been understood as meaning that neither a sample of a color, nor a description of a color in simple words, is sufficient. As a result, the standard practice has become using an internationally recognized color identification code, such as a Pantone reference, to define the color more precisely.

Despite the Babybel shape not being a color per se, the Hearing Officer felt that the same principle should apply, stating “in the case of a mark in which colour is important, such as this one, defining the colour with the broad description ‘red’ is insufficiently precise”. He concluded that the Babybel shape was invalidly registered for this reason.

While not particularly surprising in view of previous decisions, this case serves as yet another painful reminder for brand owners that the requirements for registration of non-traditional marks are strict and that there are many potential pitfalls. Just as in the Cadbury color purple case, the Babybel shape was considered invalid due to just one small aspect of the description of the mark.

What to Do

This highlights the importance of ensuring any descriptions used for trademarks, particularly non-traditional trademarks like colors and 3D shapes, are drafted very precisely to ensure that they do not leave room for ambiguity of interpretation. Recent changes in the law have removed the requirement to represent trademark applications graphically, but trademarks must still be presented in such a way that they comply with the criteria set out in the Sieckmann judgement.

In addition to giving careful thought to any new trademark applications being filed, brand owners would be wise to review any non-traditional trademarks registered some time ago, particularly prior to the guidance in the Sieckmann and Libertel cases, to ensure that the descriptions used have stood the test of time and comply with the updated, stricter requirements for registration.

The decision also acts as a cautionary tale for trademark practitioners, reminding them that there can be severe consequences for failing to set out your case clearly and in full at an early stage. Sainsbury’s was heavily criticized by the Hearing Officer for their “chaotic” and “shambolic” handling of the case, and for their “unreasonable behaviour”, which included invoking the incorrect legal grounds on multiple occasions, and attempting to restore grounds previously dropped with only a week left before the hearing. This all resulted in them only being awarded £200 in costs, equivalent to the official fee, but not enough to compensate them for any other expenses incurred.

This may not be the end of the story for Babybel, as Fromageries Bel has the opportunity to challenge the UKIPO’s decision by filing an appeal to either the Appointed Person or the UK High Court.