• In the UK Office

    The Hole Truth

    In 1912, Clarence A. Crane sold the first sweet with a hole. Given its shape, he named the new product after a life preserver or life belt. The introduction of the annular shaped Lifesavers sweets in the USA was not a success, however, since they lost their mint flavour within about a month. The idea was therefore sold on to two advertising men, Edward J. Noble and J. Roy Allen who found that the product itself was stable, but that the loss of flavour was caused by the choice of packaging. Once the packaging was changed, the Lifesavers mint became highly successful.

    In 1919 the product was introduced to the UK and became immensely popular in this country. In twelve years, UK annual sales had built up to over 2.25 million packs. After that, however, sales of Lifesavers mints in the UK slowly declined until, by 1956, they were virtually non-existent. By contrast, the product remained (and remains) one of the best known confectionery brands in the USA.

    In 1937, a UK company, Navy Sweets Limited, began selling a home grown annular sweet known as Navy mints in the UK. From 1955 onwards, the product had NAVY embossed twice on one side of the mint. Sales of Navy mints were intermittent, the last appearance being between 1990 and 1994.

    In 1948 Rowntree introduced Polo mints to the UK market. These mints had the same, annular shape as Lifesavers and Navy mints, but were aggressively advertised as The Mint With The Hole. This slogan is now one of the best known in the UK and is widely associated, by UK consumers at least, with Polo mints.

    When the new Trade Marks Act was introduced in the UK in 1994 and shapes became registrable for the first time, Nestle, who had bought the Rowntree business during the 1980s, applied to register the shape of its Polo mint (UK trade mark application no. 2006992). The application featured a photograph of a white, annular mint without any other indicia. (In use, Nestlé’s product has POLO embossed twice on one side of the mint).

    The application was accepted on the basis of evidence of acquired distinctiveness, including evidence of UK sales of Polo mints in 1994 of over £41 million, and was advertised in April 1997. The application was opposed by Kraft Food, the present owner of the Lifesavers brand, and Mars UK. The principal grounds of both oppositions were

    • Lack of distinctive character (Section 3(1)(b)), and
    • The mark was exclusively a sign which had become customary in the trade (Section 3(1)(d)).

    In addition, Kraft also opposed on the basis of certain prior rights in their ownership, including a UK trade mark application (no. 2000622) for the 3-D shape of an annular sweet embossed with the word LIFESAVERS (Section 5(2)(b)).

    On the evidence before the Hearing Officer, Nestlé’s trade mark application was allowed to proceed but only for a very narrow description of the mark and goods, namely

    • A white coloured annular shape, the dimensions of which must be limited to that of a standard Polo mint, and
    • A specification limited to “mint flavoured compressed confectionery”.

    In reaching this decision, the Hearing Officer commented as follows:

    • The evidence only supported use of the precise product sold by Nestle.
    • Section 3(1)(d) created a special problem for the shape of the goods. If this (shape) were customary to the trade then evidence of use would not overcome the objection. Being customary to the trade by its nature – where the trade mark is the goods – means that it would not be possible to discern from the trade mark from whom the goods originate. If the public are used to several sweets or confections of the same nature then there is nothing that can lead them to differentiate between them, other than additional matter such as the name Polo on the packaging or the mint itself.
    • On the evidence of, in particular, limited sales of Lifesavers and Navy mints in the UK in recent years, no case had been made out that Nestlé’s claimed shape was customary to the trade in December 1994 (the date of application). The Section 3(1)(d) objection therefore failed.
    • On the basis of
    • The long and continuous advertising campaign for Polo mints, which always referred to or prominently displayed the annular shape of the product,
    • The virtual absence of any similar product on the UK market, and
    • The length, scale and nature of Nestlé’s sales of Polo mints, the shape applied for had acquired a distinctive character and the Section 3(1)(b) objection also failed.
    • In Kraft’s prior trade mark application for the 3-D shape of the Lifesavers sweet, the only distinctive feature was the word mark. The shape itself of Kraft’s product was not distinctive. It followed that, although the earlier (Kraft) application reproduced the same shape as the Nestle mark, the presence of the word Lifesavers upon it meant that it would be identified with the opponent. Further, the Lifesavers shape, as a result of the use of the wording, would be seen as emanating from a source other than Nestle. If there was any association it would be association in the strict sense, a momentary bringing to mind. There would not be the kind of association that would lead to confusion. For this reason, the Section 5(2)(b) objection raised by Kraft was also rejected.

    In a related opposition heard at the same time, Nestle had opposed Kraft’s UK trade mark application no. 2000622 for the 3-D shape of an annular sweet bearing the trade mark LIFESAVERS. The principal grounds of opposition were based on Nestlé’s goodwill and reputation in the shape of a white annular mint acquired through use in the UK (Section 5(4)(a)) and their claim that this colour/shape was an earlier well known mark in the UK (Section 5(2)(b)/Section 6(1)(c)).

    The Hearing Officer rejected the opposition and allowed Kraft’s application to proceed. In his view,

    • Given the nature of Nestlé’s mark, being the colour and shape of goods without any other indicia, small indications would enable customers to differentiate between Nestlé’s mark and the marks of third parties. The applicant’s trade mark had the word LIFESAVERS boldly and prominently embossed upon it, this was more than a small indication. On seeing this word, it was extremely unlikely that a consumer would believe that Nestle were responsible for Kraft’s product.
    • A sensible definition of a well known mark for the purposes of Section 5(2)/Article 6(1) was one which was well known in the UK but not in use here. It followed that, in the normal course of events, there was a presumption that the party seeking protection (in this case the Swiss based company Nestle) had some form of base in a foreign country and the UK consumer would be aware of this owing to the absence of use of the trade mark in the UK. On this definition, Nestlé’s claim that the Polo mint shape (with or without the embossed word POLO) was well known in the UK was not established.

    Another opposition filed by Nestle against Swizzels Matlow’s UK trade mark application (no. 2025205) for the 3-D shape of an annular mint bearing the trade mark NAVY (twice) was based on very similar grounds to those of their opposition to Kraft’s LIFESAVERS 3-D mark. This opposition was also rejected on the same basis as their opposition to the Kraft application.

     

    Comment

    For over 50 years, Nestle and their predecessors have sold Polo mints in the UK under the banner The Mint With The Hole. This has been one of the most successful advertising campaigns in the confectionery, or for that matter any other, area. There is no doubt that, amongst UK consumers, the sight of a white, annular shaped sweet would lead to the almost universal cry, Polo. What is their reward for these Herculean efforts? The answer seems to be a UK trade mark registration that is so limited that it cannot prevent the registration or use of an identical 3-D mark which also bears an embossed, distinctive trade mark (other than Polo). There must also be considerable doubt whether their registration will be able to prevent the sale of an unmarked annular sweet, the colour and/or size of which can be differentiated from that of Nestlé’s accepted mark. This does not seem to be much reward for 50 years of very high sales and enlightened advertising.

    Trade mark authorities are understandably wary of granting what could be perpetual trade mark monopolies for the shape of goods themselves. From a public policy point of view, design protection, with its more limited duration, is seen as a more appropriate form of protection for such shapes.

    Just occasionally, however, the shape of a product itself is so cleverly marketed and, as a result, so widely recognised, that relatively broad trade mark protection for that product shape can be justified. The annular shape of Polo mints would appear to be such a case. In the writer’s view, Nestle should be able to prevent the registration and use of identical and/or similar annular shaped sweets in the UK whether or not they are embossed with another trade mark, on the basis that the annular shape will lead to an assumption that there is at least a connection with the manufacturer of Polo mints. This situation should continue for as long as the level of recognition of the shape of Polo mints in the UK remains at the present, high levels.