Fromageries Bel v Sainsbury’s: Mini Babybel’s red wax trademark ruled invalid

What happened

Fromageries Bel owned a UK registered trademark covering the shape and red colour of its Mini Babybel cheese. Sainsbury's challenged the registration at the Trademarks Registry and won, on the basis that describing the colour simply as "the colour red" was too vague to meet the legal test for what a trademark description needs to show. Fromageries Bel appealed to the High Court. It argued that the strict precision rules for colour don't apply here, because colour was just one feature of a mark that also covered shape, not a mark registered for colour alone. It also tried a fallback option: asking to narrow the registration to one specific shade, Pantone 193C.

What did the court decide in Fromageries Bel v J Sainsbury?

The court dismissed the appeal. It rejected the argument that the precision rules for colour only bite when colour is an "essential characteristic" of a shape mark. The real question, the court said, is whether a specific shade is needed for the mark to do its job of distinguishing one trader's goods from another's, and here it was. The court also held that the image of the cheese included in the registration didn't narrow the written description down to one particular red. On the fallback point, the court refused to let Fromageries Bel limit the mark to Pantone 193C after the fact, since that would add a new feature to the mark rather than simply narrow the existing rights, which isn't what the relevant limitation power under the Trade Marks Act 1994 is for.

What we learned from this

• What I'd take from this is that a generic colour word in a trademark application is a real gap, not a formality, and it can sink a registration years after it's granted.
• If colour is part of what makes your name, logo or packaging distinctive, specify the exact shade, for example by Pantone reference, at the application stage.
• You generally can't fix an imprecise colour description later by asking to narrow it to a specific shade. That's treated as adding a new feature, not limiting existing rights.
• A picture in your trademark application won't necessarily be read as pinning down a vague written description to one specific colour.

Things to be aware of

The businesses involved

What happened next

• The dispute followed an earlier UK Intellectual Property Office decision invalidating the Babybel 3D shape mark after a cancellation challenge brought by Sainsbury's.Source: Stoneslaw
• World Trademark Review reported the High Court ruling as confirming the Babybel red wax mark was invalid, a further win for Sainsbury's in the dispute.Source: Worldtrademarkreview, February 2020
• IPKitten reported that the High Court dismissed Fromageries Bel's appeal over the 3D mark shortly after judgment was handed down.Source: IPKat, December 2019

What others said about it

• Lexology's write-up frames the outcome plainly for the losing side: the ruling confirms a trademark owner needs to identify a precise hue, not just a colour name.Source: Lexology
• Venner Shipley's David Birchall, writing for CITMA, examined the decision as a lesson in how colour elements of trademarks need to be specified at the application stage.Source: Vennershipley
• Serle Court's case note records that Michael Edenborough KC appeared for the appeal on the validity question before the High Court.Source: Serle Court