High Court finds a hole in Polo mint shape mark proposal

In Mars UK Ltd v Société des Produits Nestlé SA, the UK High Court has confirmed that the implementation of the UK Trademarks Act 1994 has limited the possibility of altering a trademark midway through an application.

Nestlé sought to register the shape of its well-known Polo brand of candy as a trademark. The candy is a hard mint in the shape of an annulus (a disk with a hole in the middle) and has a particular bevelling on the inside of the hole. The advertising for Polo describes it as 'the mint with the hole in the middle'. Mars opposed the registration on the basis that it was devoid of distinctive character pursuant to Section 3(1)(b) of the Trademarks Act. It also argued that the mark had not acquired distinctive character through use.

A hearing officer at the Trademarks Registry proposed that Nestlé amend the trademark application to limit the mark:

• to the colour white;
  
  
• to the same size as the Polo branded mint; and
  
  
• to include the distinctive (bevelled) hole.

Mars objected to the hearing officer's proposals for amendment on the grounds that it was outside the power of the Trademark Registry to accept amendments that substantially altered the character of the mark.

The High Court agreed with Mars and struck out the amendments, thereby rejecting registration. It held that the only amendments that are permissible in relation to a trademark application are those specified in Sections 13(1) and 39(2) of the Trademarks Act. These provide that an applicant may disclaim rights to the exclusive use of any specified element of the trademark (or limit the mark by territory), and otherwise may only correct:

• its name and address;
  
  
• errors of wording or of copying; and
  
  
• obvious mistakes.

These corrections are only permissible if they do not substantially affect the identity of the trademark or the goods and services covered by the application.

The court, following the reasoning in Swizzels Matlow Limited's Application ([1999] RPC 879), held that the changes proposed by the hearing officer caused Nestlé's registration to morph into something quite different, which was outside the permitted scope of amendment.

For discussion of another case in the UK courts involving Nestlé and Mars, see Breakthrough in HAVE A BREAK Case awaited and Nestlé can't have a break.

Larry Cohen, McDermott Will & Emery, London