Lord Justice Mummery told the Court: "This is an appeal concerning
Polos, the mint with the hole in the middle. This is an appeal with
a hole in the middle. It is dismissed."
It was back in 1994 that Nestlé applied to register the
three-dimensional Polo shape as a trade mark. It submitted a black
and white photograph of the mint, but without the word "Polo"
embossed on it. No particular colour or size was claimed in the
application.
In July 1997, rival confectioner Mars lodged its formal
opposition. Mars claimed that the mark was "devoid of distinctive
character" in the absence of some other distinguishing feature,
such as the embossed word "Polo". It also said that the trade mark,
as presented, was in "common usage by various traders in the
UK".
The issue was decided by the UK Patent Office's Trade Mark
Registry in October 2002. The Hearing Officer ruled that, as it
stood, the application could not be registered, but added that the
application could be registered if three conditions were
met.
First, the Hearing Officer said, the specification must be
limited to "mint flavoured compressed confectionery"; second, the
sign must be limited to the colour white; and third, the sign must
be limited by size, in terms of depth and diameter of both the mint
and the hole, to that of the standard Polo mint.
Mars appealed to the High Court, claiming that the amendments
made material changes to Nestlé's original trade mark application,
and the High Court agreed. So then Nestlé appealed.
On Monday the Court of Appeal upheld the judgment of the High
Court, explaining that amendment of a trade mark after registration
has been applied for is permissible "only in very limited
circumstances" - normally where the amendment actually restricts
the scope of the trade mark applied for.
According to the Court:
"...the requirements of colour and dimension do not restrict
'the goods' covered by the application for registration of the
mark. The requirements restrict the mark itself to that which
distinguishes the goods covered by the application from the goods
of other traders."
Accordingly the amendments could not be made.
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