English High Court dismisses Babybel TM appeal

The English High Court has dismissed the owner of cheese brand Babybel’s appeal in a trademark dispute over the colour of the cheese’s wax coating, in a win for UK supermarket Sainsbury's.

In February this year, the UK Intellectual Property Office (IPO) cancelled French cheese company Fromageries Bel SA’s (FBSA) mark for the wax-coating of Babybel cheese.

Sainsbury's had the mark invalidated on the grounds that there was a mismatch between the description of the mark and the colours depicted in the pictorial representation registered at the IPO.

The description of the mark reads: “The mark is limited to the colour red. The mark consists of a three-dimensional shape and is limited to the dimensions shown above.”

According to the original IPO decision, FBSA failed to define the colour red with “sufficient precision or clarity” for the mark to stand.

On appeal, FBSA argued that because the colour red was just one of “several essential characteristics,” there was no need for the exact shade or hue to be specified in the description of the mark.

In a judgment issued on December 12, the court backed the IPO’s conclusion that the mark must specify the exact hue of red.

According to the ruling, the mark could only be used to distinguish from other brands and products if it used a particular hue of red that was associated with Babybel cheese.

The court said that whether marks designating colour need to specify the exact hue should be judged based on whether the other elements of the mark were sufficient to distinguish the commercial origin of the goods or services.

In the absence of other distinguishing factors, the mark should specify the exact hue, the court said.

In the case of Babybel, the court agreed with the IPO that the other essential characteristics of the mark, including the shape of the product, its dimensions, the pull tags, were not sufficient distinguishing factors.