This month two iconic brands, Cadbury and Scrabble, lost cases centred on the registrability of non-traditional trademarks in the UK’s Court of Appeal.  While the two decisions are consistent with each other, one commentator believes that these cases show the complicated nature of trademark law (with even specialist judges finding it hard to interpret it), and has called for a new statute-based law to be implemented.

In Nestlé v Cadbury, Cadbury lost its battle with its Swiss rival after it attempted to trademark a specific shade of purple when used as the “predominant colour” on packaging for chocolate. The decision overturned a judgment from last year which would have stopped other manufacturers from using the colour, with the Court of Appeal ruling that Cadbury’s mark did not comply with the requirements for trademark registration and was attempting to register “multiple signs” involving the colour.

In Spear v Zynga, the makers of Scrabble, JW Spear & Son and parent company Mattel, attempted to quash a first instance ruling that their Scrabble ‘tile mark’ was not a viable trademark. Zynga was able to demonstrate that tiles with well-known combinations, such as O2 and F1, would be covered by the Scrabble registration, thus causing confusion with the public, and the Court of Appeal ruling upheld the summary judgment in favour of Zynga.

The two decisions are consistent (as would be expected, given that Sir John Mummery delivered the leading judgment in both). However, Douglas Campbell of 3 New Square feels that the cases illustrate that trademark law has become too complex and is overdue a rethink. He told WTR:  “You’ve got distinguished specialists going one way and the Court of Appeal going the other. Trademark law can’t therefore be all that clear.”

Campbell notes that the approaches taken under the Trademarks Act 1994, Trademark Directive, and the Community Trademark Regulation, have been subject to a lot of development in the courts, especially in the Court of Justice of the European Union, and argues: “Perhaps we should rethink it at the legislative level, rather than having this court-driven law.’ Of course non-traditional trademark cases are more complex by their nature and there will always be shades of grey in the interpretation of the law, but Campbell feels that “a lot of people would say yes to a rethink of trademark law”.

As to the form this could take, he argues: “If asked what is the central point to worry about, most people would argue it was the infringement problem that needs to be rethought. The UK act was set up in 1994, the Directive which gives rise to the act dates from 1988, and discussions about the directive were a few years prior to that. You’re talking about 25 years ago and quite a lot has happened in that time.” Campbell notes that, since Arsenal v Reed, you need to show an effect on the functions of the trademark even in ‘double identity’ infringement cases. The L’Oreal v Bellure case refined this to say that the functions of the trademark include origin, advertising, investment and communication functions. “All of this was created by the Court of Justice and it would be quite nice to see this written down in black and white in a statute, regulation or directive.”

Reflecting on Campbell’s comments, Carrollanne Lindley of Kilburn & Strode notes that, “however black and white the statute writers think they have made an act, the judiciary will still have the ability to tease out every permutation of grey, rather like a modern paint colour chart”.

That said, she does agree that any rethink of trademark law should be focused on fundamental grounds that affect everybody. In terms of the UK, for example, she notes: “Many practitioners would particularly like to see the threats provisions redrawn. In 2012 the law commission began work to consider whether to repeal, reform or extend the provisions in trademark, design and patent law that allow parties who have been threatened with infringement proceedings to seek damages from the makers of the threat. The problem is that the provisions are too draconian and fail to encourage a ‘negotiate first, sue later’ approach. However the report is not due until spring 2014.”

At European level, legislative change is certainly a hot topic , and how the UK law develops remains to be seen – while the Intellectual Property Bill is being discussed to modernise aspects of the law relating to patents and design rights, trademarks have been left relatively unmentioned, at least until next spring.

This blog was first published in World Trademark Review on 23 October 2013