Nestlé goes full circle in POLO shape mark application

In Société des Produits Nestlé SA v Mars UK Limited, the Court of Appeal of England and Wales has upheld a High Court decision refusing to allow Société des Produits Nestlé SA to amend its application to register the three-dimensional shape of its POLO mint as a trademark. The court held that the amendments altered the identity of the mark itself and therefore Nestlé could not be permitted to benefit from the priority date of the original application.

Nestlé applied to register the three-dimensional shape of its POLO mint as a trademark in Class 30 of the Nice Classification in respect of "sugar confectionery". Mars UK Ltd opposed the application on the grounds that it was devoid of distinctive character and was in common usage by various traders in the United Kingdom.

In October 2002 a hearing officer at the Trademarks Registry rejected both objections raised by Mars, finding that the 'mint buying public' would assume the famous POLO mint shape to be an indicator of origin of Nestlé. However, he refused to accept the application for registration in its current form, which was unrestricted as to size and colour. He considered that the evidence demonstrated that the POLO mint shape had acquired sufficient distinctiveness only in relation to (i) white-coloured mints of the standard POLO mint size, and (ii) mint flavoured compressed confectionery. It had not acquired sufficient distinctiveness in respect of other sizes, colours or flavours.

Accordingly, the hearing officer invited Nestlé to amend its application. Both Nestlé and Mars appealed to the High Court against the "limitations" specified by the hearing officer. Mars's position was that the registrar had no power to accept or agree the proposed limitations: Nestlé was not entitled to amend the application in a way that would substantially affect the identity of the mark and yet still retain the benefit of the original application date for a different mark. The High Court allowed Mars's appeal and refused Nestlé's application to register the mark (see High Court finds a hole in Polo mint shape mark proposal).

Nestlé appealed unsuccessfully to the Court of Appeal. The appellate court agreed with the High Court in finding that Sections 13 and 39 of the Trademarks Act 1994 provide for the restriction of the "rights conferred by the registration" or "the goods covered by the application" respectively: neither provision was apt to deal with the restrictions or changes to the mark itself. By limiting the mark as to size and colour, Nestlé was seeking an alteration to the identity of the mark itself, and not the rights conferred by the registration or the goods covered by the specification. (By contrast, limiting the specification of goods to "mint flavoured compressed confectionery" fell squarely within a restriction of the goods covered by the application and was uncontroversial.)

In practical terms, the effect of this decision is that Nestlé has lost its earlier priority date for the mark and has been forced to file a fresh application complying with the registrar's requirements. Potentially, Nestlé's scope of protection for the new mark (if granted) could still prevent the sale of coloured confectionery in differing sizes, so long as it can show that these are similar marks and there is a likelihood of confusion.

Ian Starr, Ashurst, London