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England and Wales High Court (Chancery Division) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> JW Spear & Sons Ltd & Anor v Zynga, Inc  EWHC 3345 (Ch) (28 November 2012)
Cite as:  EWHC 3345 (Ch)
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Fetter Lane, London, EC4A 1NL
B e f o r e :
| (1) J.W. SPEAR & SONS LIMITED
(2) MATTEL, INC.
(3) MATTEL U.K. LIMITED
|- and -
James Mellor QC and Ashton Chantrielle (instructed by Olswang LLP) for the Defendant
Hearing date: 16 November 2012
Crown Copyright ©
MR JUSTICE ARNOLD :
Principles applicable to summary judgment applications
"As Ms Anderson QC rightly reminded me, the court must be careful before giving summary judgment on a claim. The correct approach on applications by defendants is, in my judgment, as follows:
i) The court must consider whether the claimant has a 'realistic' as opposed to a 'fanciful' prospect of success: Swain v Hillman  2 All ER 91;
ii) A 'realistic' claim is one that carries some degree of conviction. This means a claim that is more than merely arguable: ED & F Man Liquid Products v Patel  EWCA Civ 472 at .
iii) In reaching its conclusion the court must not conduct a 'mini-trial': Swain v Hillman.
iv) This does not mean that the court must take at face value and without analysis everything that a claimant says in his statements before the court. In some cases it may be clear that there is no real substance in factual assertions made, particularly if contradicted by contemporaneous documents: ED & F Man Liquid Products v Patel at .
v) However, in reaching its conclusion the court must take into account not only the evidence actually placed before it on the application for summary judgment, but also the evidence that can reasonably be expected to be available at trial: Royal Brompton Hospital NHS Trust v Hammond (No 5)  EWCA Civ 550.
vi) Although a case may turn out at trial not to be really complicated, it does not follow that it should be decided without the fuller investigation into the facts at trial than is possible or permissible on summary judgment. Thus the court should hesitate about making a final decision without a trial, even where there is no obvious conflict of fact at the time of the application, where reasonable grounds exist for believing that a fuller investigation into the facts of the case would add to or alter the evidence available to a trial judge and so affect the outcome of the case: Doncaster Pharmaceuticals Group Ltd v Bolton Pharmaceutical Co 100 Ltd  FSR 63.
vii) On the other hand it is not uncommon for an application under Part 24 to give rise to a short point of law or construction and, if the court is satisfied that it has before it all the evidence necessary for the proper determination of the question and that the parties have had an adequate opportunity to address it in argument, it should grasp the nettle and decide it. The reason is quite simple: if the respondent's case is bad in law, he will in truth have no real prospect of succeeding on his claim or successfully defending the claim against him, as the case may be. Similarly, if the applicant's case is bad in law, the sooner that is determined, the better. If it is possible to show by evidence that although material in the form of documents or oral evidence that would put the documents in another light is not currently before the court, such material is likely to exist and can be expected to be available at trial, it would be wrong to give summary judgment because there would be a real, as opposed to a fanciful, prospect of success. However, it is not enough simply to argue that the case should be allowed to go to trial because something may turn up which would have a bearing on the question of construction: ICI Chemicals & Polymers Ltd v TTE Training Ltd  EWCA Civ 725."
The requirements of Article 2
"A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."
Article 2 is implemented in the UK by section 1(1) of the Trade Marks Act 1994. Article 4 of Council Regulation 207/2009/EC of 26 February 2009 on the Community trade mark (codified version) corresponds to Article 2 of the Directive.
The first condition
"… 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. None the less, a colour per se is capable, in relation to a product or service, of constituting a sign."
"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".
"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."
"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."
"33. … if that condition is not to be deprived of all substance, it cannot be accepted that the subject-matter of any trade mark application necessarily constitutes a sign within the meaning of Article 2 of the Directive.
34. As the Court has held previously, the purpose of that requirement is in particular to prevent the abuse of trade mark law in order to obtain an unfair competitive advantage (Heidelberger Bauchemie, paragraph 24).
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. As pointed out by the Advocate General in point 51 of his Opinion, 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).
40. Accordingly, the answer to be given to the national court must be that Article 2 of the Directive is to be interpreted as meaning that the subject-matter of an application for trade mark registration, such as that lodged in the main proceedings, which relates to all the conceivable shapes of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner, is not a 'sign' within the meaning of that provision and therefore is not capable of constituting a trade mark within the meaning thereof. "
The second condition
"46. That graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified.
47. Such an interpretation is required to allow for the sound operation of the trade mark registration system.
48. First, the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor.
49. Next, the entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators.
50. On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of registration applications and to the publication and maintenance of an appropriate and precise register of trade marks.
51. On the other hand, economic operators must, with clarity and precision, be able to find out about registrations or applications for registration made by their current or potential competitors and thus to receive relevant information about the rights of third parties.
52. If the users of that register are to be able to determine the precise nature of a mark on the basis of its registration, its graphic representation in the register must be self-contained, easily accessible and intelligible.
53. Furthermore, in order to fulfil its role as a registered trade mark a sign must always be perceived unambiguously and in the same way so that the mark is guaranteed as an indication of origin. In the light of the duration of a mark's registration and the fact that, as the Directive provides, it can be renewed for varying periods, the representation must be durable.
54. Finally, the object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Consequently, the means of graphic representation must be unequivocal and objective.
55. In the light of the foregoing observations, the answer to the first question must be that Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective."
"33. Accordingly, a graphic representation consisting of two or more colours, designated in the abstract and without contours, must be systematically arranged by associating the colours concerned in a predetermined and uniform way.
34. The mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours 'in every conceivable form', as is the case with the trade mark which is the subject of the main proceedings, does not exhibit the qualities of precision and uniformity required by Article 2 of the Directive, as construed in paragraphs 25 to 32 of this judgment.
35. Such representations would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to repeat with certainty the experience of a purchase, any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark."
The third condition
Summary of the parties' arguments
i) the Tile Mark covers an infinite number of permutations of different sizes, positions and combinations of letter and number;
ii) the Tile Mark does not identify the precise shape of the tile, in particular the extent to which the corners are rounded, or its dimensions;
iii) the colour "ivory" is not sufficiently precisely specified.
i) It can be seen from the jurisprudence of the CJEU that the three conditions are not independent, but inter-related.
ii) If it can be demonstrated that the subject matter of an application or registration has distinctive character, then not only does that show that the third condition must be satisfied, but also it at least assists the applicant or proprietor to show that the first and second conditions are satisfied. In support of this proposition, counsel for Mattel relied in particular on the passages from Libertel and Heidelberger Bauchemie that I have set out in paragraphs 14 and 16 above, on the recent decision of His Honour Judge Birss QC sitting as a Judge of the High Court in Société des Produits Nestlé SA v Cadbury UK Ltd  EWHC 2637 (Ch) and on Kerly's Law of Trade Marks and Trade Names (15th ed) at §2-049.
iii) Mattel has a realistic prospect of establishing that the Tile Mark has acquired a distinctive character through use, as evidenced by (a) the fact that the Registrar of Trade Marks accepted the Tile Mark for registration on the basis of acquired distinctiveness, (b) the fact that Master Bragge gave Mattel permission to carry out a survey with a view to establishing distinctive character and (c) the evidence of distinctiveness filed by Mattel on the present application.
The relevance of distinctiveness
"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."
"Can Cadbury, even if they have shown that the public associate the colour purple with Cadbury's chocolate, obtain a trade mark registration for that colour per se?"
"Plainly Libertel did not decide that a 'non-spatially delimited' colour mark that specified a Pantone shade would in all cases satisfy Art. 2 of the Directive. But the court did decide the matter of principle that a colour itself was capable of satisfying Art. 2. Once the principle is established that a colour can satisfy Art. 2 the question becomes one of fact to decide whether in a given case it does so. But in this case Nestlé accept Mr James' finding on the evidence that the colour purple is distinctive of Cadbury for chocolate per se. … In my judgment Heidelberger does not assist Nestlé, it assists Cadbury. I reject points (iv) and (v). They are contrary to Libertel."
"63. Since single colours per se are, as a matter of European law, capable of being signs within Art. 2 (i.e. they are capable of being a sign, capable of being represented graphically and capable of distinguishing) then, to paraphrase a little the words Cadbury have used in the description of the mark, in my judgment the colour purple (Pantone 2685C) applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of chocolate, is capable of being a sign within Art. 2.
64. The answer to the question I posed at the outset is clear on the basis of the current state of European law. Since on the evidence the public associate the colour purple itself with Cadbury's chocolate, Cadbury are entitled to a registered trade mark for that colour on the relevant goods and that is the mark they have applied for. Mr James was right to find that the mark satisfied Art. 2. I will dismiss this part of the appeal."
"… I agree with Mr James [who had said that these words required a decision taker to make a judgment, but that that judgment did not present more difficulty than other judgments required to be made in relation to infringement]. In my judgment the word predominant used in this way in this mark does not introduce any more vagueness or uncertainty than is already present and acceptable in a trade mark registration of this kind. Ms Himsworth submitted that the wording in Cadbury's mark simply made explicit what was implicit in the mark considered in Libertel. I agree. …"
"The requirements that the sign must be 'precisely identified' and the graphical representation must be 'precise' and 'unequivocal' are capable of being taken too far. The underlying policy reasons do not require every mark on the register to be defined with absolute precision. The degree of precision required must depend on the mark itself and its distinctive character. For any mark, there is a degree of permissible variation in its graphical representation. Consider a word-only registration. The graphical representation is the word in capitals in plain type. Such a registration covers the word in a very wide range of typefaces. The variation in presentation is permissible because the distinctive character of the mark resides in the word itself and that does not change. A different type of permissible variation is seen in hologram or 'movement' marks - see below. There are other marks where the degree of permissible variation is going to be very small indeed if not practically non-existent. It may well prove easier to justify permissible variation where the variation occurs in the actual use made of the mark, so that it can be seen and/or proved that the public see the same mark. In many cases, this notion of permissible variation has to be expressed in a series of images or marks, but, we suggest, not invariably."
The first condition
The second condition