Out-Law / Your Daily Need-To-Know

The UK's Court of Appeal has upheld a ruling that Nestlé could not make material amendments to a trade mark application in the middle of the application process. The confectionary giant wanted to protect the shape of a Polo mint.
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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