It is rare for a court decision concerning the dry technicalities of trade mark law to make the front pages of the national daily press, yet this is precisely what happened with the recent Court of Appeal decision concerning an application to register the shape of the POLO mint as a trade mark. The case makes a practical point of general relevance, however, for manufacturers of products having a memorable shape or appearance which have become well-known to the public. The registration of such shapes as trade marks carries with it powerful benefits, but careful thought must be given to any such application to ensure that the applicant’s claim is not over-stated, in order to overcome the reluctance of the Trade Marks Registry and the courts to grant such a far-reaching right.
Nestlé applied to register the shape of its well-known POLO mint in relation to "sugar confectionery" and, as is fairly usual in such cases, the Registry objected that the shape was nondistinctive, obliging Nestlé to prove that consumers had come to recognise it as the company’s trade mark. Nestlé was able to show the required degree of use of the shape, but limited to the colour white and the specific dimensions of the POLO mint, and even then only in relation to the narrower specification of goods "mint-flavoured compressed confectionery".
Nestlé sought to overcome this deficiency by restricting the specification of goods for which the mark had become distinctive to "white, mint-flavoured compressed confectionery [of the particular size and dimensions of the POLO mint]" rather than by amending the mark itself to specify colour and size. The distinction is important because whilst an applicant is permitted to restrict its specification of goods at any time during the course of an application, only in very limited circumstances may the mark itself be changed.
The Court held that Nestlé’s evidence showed use of, effectively, a different mark to the one applied for. The Trade Marks Act did not permit amendment of the kind necessary in order to overcome the material discrepancies between the mark applied for and the mark as used. The proper course of action for Nestlé was, accordingly, to file a fresh application. The case illustrates the difficulty of obtaining registration for the shape of goods as a trade mark. An arbitrary shape mark is not treated in the same way as an arbitrary word mark, because the Registry takes the view that a shape is less likely than a word to be seen as conveying a message of trade origin. Even where a shape has become distinctive through long use, evidence of distinctiveness should be carefully assessed and the application framed accordingly, to avoid problems of this nature.
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