NIPC Law

Jane Lambert Chancery Division (Mr Justice Measd) Societe des Produits Nestle SA v Cadbury UK Ltd [2022] EWHC 1671 (Ch) (5 July 2022) This was an appeal from Louise White's decision in The Colour Purple, Société des Produits Nestlé  SA v Cadbury UK Ltd, BL O/198/19 of 12 April 2019. The hearing officer had heard oppositions by Société des Produits Nestlé ("Nestlé") to the following trade mark applications by Cadbury UK Ltd. ("Cadbury"): Application No 3 019 362 Application No 3 019 361 , and  Application No 3 025 822 . She found for the opponent in respect of application numbers3025822 and 3019361 but not application number 3019362. Cadbury appealed against her decision on 025822 and 3019361. Before the appeal could be heard. Cadbury settled its differences with Nestlé.  The Registrar of Trade Marks considered that the appeal gave rise to important issues where the law was uncertain and sought to intervene in the proceedings.  Permission to do son was granted...

J ane Lambert Chancery Division (HH Judge Melissa Clarke)  Jaguar Land Rover Ltd v Ineos Industries Holdings Ltd [2020] EWHC 2130 (Ch) (3 Aug 2020) On 11 April 2016, Jaguar Landrover Ltd. ("JLR") applied to register the shapes of the Land Rover Defender 90 and Land Rover Defender 110 motor vehicles, in each case with and without rear-mounted spare wheels ("the Marks") and the shapes of the Defender 90 and 110 with spare wheels, in classes 9, 12, 14, 28 and 37.  On 12 May 2016, that company applied to register the shapes of the Defender 90 and 110 without spare wheels. Unlike registered designs, design rights and copyrights, trade marks can be renewed indefinitely. It is not easy to register the shape of a product because there are restrictions on the registrations of signs that consist exclusively of indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production...

Jane Lambert Court of Justice of the European Union (Judges L. Bay Larsen (President of the Chamber), J. Malenovský, M. Safjan, D. Šváby and M. Vilaras (Rapporteur)) Joined appeals  C‑84/17 P, C‑85/17 P and C‑95/17 P,  Société des produits Nestlé SA v Mondelez UK Holdings    & Services Ltd. [2018] EUECJ C-84/17P, ECLI:EU:C:2018:596  25 July 2018 The issue before the Court of Justice of the European Union was whether it is necessary for a mark that is devoid of distinctive character to have acquired distinctiveness through use in each and every member state of the European Union in order to be registered as an EU trade mark, or whether it is enough to show that it has acquired distinctiveness through use in the EU as a whole. The Mark The mark that is the subject of this discussion is the 3-dimensional shape in the above photograph.  It was registered by the Société des produits Nestlé SA ("Nestlé") as an EU trade mark for...

Jane Lambert Société Des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358 (17 May 2017) Unregistered design right  subsists for no more than 15 years. A design registration for only 25. But a trade mark registration can last forever. That no doubt explains why La Société des Produits Nestlé S.A  ("Nestlé") has persevered with this case despite losing to Cadbury UK Ltd  ("Cadbury") in the Trade Marks Registry and on appeal. The Issue S.1 (1) of the Trade Marks Act 1994  provides that any sign can be a trade mark so long as it is "capable of being represented graphically" and "capable of distinguishing goods or services of one undertaking from those of other undertakings." The section gives some examples one of which is "the shape of goods or their packaging." On 8 July 2010, Nestlé's trade mark agents applied to the  Intellectual Property Office  ("the IPO") to register the shape of the K...

"The Color Purple" is a novel by Alice Walker  which won its author the Pulitzer Prize for Fiction  in 1983. if you have not read the book here is Wikipedia's summary of the plot .  It is a great book with a great story. The colour purple (or rather pantone 2685C) is only slightly less gripping. It is the subject of a tussle between two of the world's largest confectionery companies the latest stage of which has just ended in the Court of Appeal (   Société Des Produits Nestlé S.A. v Cadbury UK Ltd .  [2013] EWCA Civ 1174 (4 Oct 2013)). It started on 15 Oct 2004 when Cadbury Limited ( “Cadbury” ) applied to register "the colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods" as a trade mark for the following goods: " Class 30 : Chocolate in bar and tablet form, chocolate confect...