IN THE UK OFFICE

A Wholly Justified Approach to Mark Amendments

The mint with a hole was the focus of a notable legal dispute at the end of last year, which continues to have far-reaching consequences.

Nestlé, manufacturer of the well-known POLO mint, applied to register the shape of a POLO mint as a trade mark before the U.K. Patent Office. The application depicted a round, white mint with a hole in the middle, without the word POLO that appeared on the sweet in practice. Confectionery arch-rival Mars opposed the application, on the grounds that the shape lacked distinctive character and was in common use in the trade.

At a hearing, the Patent Office found that Nestlé had acquired distinctiveness in the shape of a white mint with a hole, the mint and the hole being of certain diameters and depths. The hearing officer instructed Nestlé to amend its application by restricting the goods claim from “mint-flavoured compressed confectionery” to “white mint-flavoured compressed confectionery” of a certain size, depth and diameter.

Both parties appealed to the High Court, Nestlé on the ground that the amendments were neither necessary nor appropriate to define the distinctive character of the sign, and Mars on the ground that the amendments constituted an amendment of the mark itself, which was impermissible under Section 39 of the Trade Marks Act 1994. The matter was heard by Lloyd J. in December 2003.

 

The proposed amendments

Argument focused on whether Nestlé’s amendments were in fact permitted. Amendments to applications were governed by Section 39 (1) TMA 1994, which stated that:

“(1) The applicant may at any time withdraw his application or restrict the goods or services covered by the application.

If the application has been published, the withdrawal or restriction shall also be published.

(2) In other respects, an application may be amended, at the request of the applicant, only by correcting—

(a) the name or address of the applicant,

(b) errors of wording or of copying, or

(c) obvious mistakes, and then only where the correction does not substantially affect the identity of the trade mark or extend the goods or services covered by the application.”

This was in contrast with Section 13, which read:

(1) The applicant for registration of a trade mark, or the proprietor of a registered trade mark, may

(a) disclaim any right to the exclusive use of any specified element of the trade mark, or

(b) agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation…”

The Patent Office had ordered the amendment of Nestlé’s goods claim under S. 13 (1) (b) as “a territorial or other limitation.” Mars argued that the amendment was not a restriction of goods, but rather an amendment of the mark itself, which was forbidden by S. 39.

The judge found for Mars. The amendment was to the form of the mark, not the goods. Although amendments to marks had been permitted under the Trade Marks Act 1938, the TMA 1994 was intended to promote legal certainty by ensuring that a mark was not permitted to change materially over time. The judge approved the view of Simon Thorley QC acting as the Appointed Person in Swizzels Matlow Ltd.’s Application for a Three-Dimensional Trade Mark [1999] R.P.C. 879, who held that although the word “other” in S. 39 (1) did not need to be construed ejusdem generis with “territorial” in the same section, nevertheless to allow the word such a broad meaning that applicants could circumvent the “plain language” of the section by amending the mark would be to drive a coach and horses through its restrictive effect.

 

Comment

The judge departed from the view of the Patent Office with reluctance. He paid homage to the views of “a specialist tribunal with unrivalled experience.” Under CPR rule 52.11 (1) the standard of an appeal is that of a review rather than a re-hearing, and the judge was right to show reluctance, although not the very highest degree of reluctance, to interfere with the hearing officer’s decision.

Nevertheless, the judge observed with concern that the Patent Office’s acceptance of this type of mark amendment under the guise of specification restrictions was a “daily occurrence.” Moreover, lack of clarity as to the proper basis for amendments and limitations entered meant that amendments to applications were often classed improperly as restrictions of goods, rather than as limitations under S. 13. There was “clearly scope for steps to be taken” to correct these practices.

The Court of Appeal recently upheld this decision, and nine months on, this case is still evoking change, with a new Patent Office practice direction confirming that, in future, territorial restrictions will be treated as S. 13 limitations and not as restrictions to the scope of goods or services.

This is the right approach, and one that can be wholly justified. It is difficult to tell the difference at times between an amendment that constitutes a restriction of goods and one that is purely a territorial or other limitation. However, amendments that affect the graphic representation of the mark will generally be clear. It is therefore of the utmost importance adequately and fully to specify the mark for which protection is sought at the outset.