Babybel sees red: its 3D brand is cancelled!

The English supermarket group Sainsbury's recently obtained the cancellation of a trademark registered by Fromageries Bel in 1996 and representing the shape of the "little cheese of big smiles":

This mark was described as follows: "The mark is limited to the color red. The mark consists of a three-dimensional shape and is limited to the dimensions indicated above. "After hearing the arguments of both parties, the UK Trademark Office (UKIPO) ruled in favour of Sainsbury's and cancelled Babybel's trademark. For UKIPO, the colour specified in the mark was ambiguous.

The various problems linked to the BABYBEL brand

In making its application for a declaration of invalidity, Sainsbury's raised a number of arguments, including the following:

• The trade mark consists of the goods themselves in an unadorned red wax/plastic packaging, as is customary in the trade;
• The trademark consists exclusively of the shape of the goods themselves. It is devoid of any distinctive character;
• The dimensions used in the representation indicate the quantity of cheese and thus designate the species, quality, quantity or geographical origin of the goods.

In support of these points, the English company added that it was customary to store cheese in wax/plastic packaging. It referred to the fact that some Dutch cheeses use similar packaging. Finally, Sainsbury's argues that the term Babybel is generic. It claims that 'the trade mark consists exclusively of a sign which has become customary in current language or established trade practice. »

As for Fromageries Bel, it filed substantial evidence in response. These documents demonstrated the success of the Babybel product in the United Kingdom since 1981. They also established that, since 2016, Fromageries Bel has held 23.6% of the snack cheese market. Finally, Bel pointed out the significant expenditures made each year on product marketing and promotion.

The UKIPO decision and the cancellation of the Babybel trademark

The English Board rejected most of Sainsbury's arguments concerning the shape of the product. Indeed, for UKIPO, the trade mark does not consist exclusively of the shape of the goods. The Office points out that colour is an important element of the mark.

Continuing its analysis, UKIPO states that the description of the mark was ambiguous. It does not allow the shade of red to be determined. Consequently, the mark was not in conformity with earlier case law. This decision follows on from the Cadbury case, where the Court also rejected the mark because the purple colour applied for did not correspond to a Pantone colour. The INPI has thus indicated that, if it is possible to register a colour as a trade mark, the shade requested must be precisely defined by means of an international code, such as the Pantone colour chart.. Moreover, for the's violet recording of Prince in the United States, the deposit claimed the Pantone 109 C.

This decision is a reminder of the importance of precision when filing a trademark. Even 20 years after its registration, a trademark can be cancelled because the application was imprecise. It is therefore recommended to be accompanied by a specialized agent when making a deposit.

Finally, Sainsbury's victory remains above all symbolic. Indeed, even without a registered trademark, the Babybels have an important distinctive character. And their notoriety alone could make it possible to oppose any imitation.