Cadbury’s Purple Patch in the High Court
Cadbury recently achieved success in its continued and well documented legal battle with fellow confectionary giant, Nestlé, in which the UK High Court partially upheld Cadbury’s appeal over the UK Intellectual Patent Office’s (UKIPO) 2019 decision.
This legal battle concerned Cadbury’s application to register a specific shade of purple, Pantone 2685C, as a UK trade mark for use on packaging for its milk chocolate bar, which Nestlé opposed.
This matter was first brought to the High Court in 2012, whereby the Court ruled in Cadbury’s favour before the Court of Appeal then overturned the decision in 2013. The colour mark was defined by Cadbury as applying to either “the whole visible surface” or “the predominant colour applied to the whole visible surface”. The Court of Appeal held that the colour mark as described in Cadbury’s application lacked the precision and clarity to qualify for registration as a ‘sign’ under the Trade Marks Act (TMA) 1994. More specifically, the Court homed in on Cadbury’s use of the word “predominant” which was not deemed to refer to a single colour mark and could provide Cadbury with an unlimited use of the colour purple and therefore attain an unfair competitive advantage in the market.
In light of the Court of Appeal’s ruling, Cadbury filed three new trade mark applications – mark ‘361, mark ‘362 and mark ‘822 – at the UKIPO in respect of Pantone 2685C in 2019. Each of the applications contained different descriptions of the mark and were all opposed by Nestlé on the ground that the marks did not meet the requirements of a sign under the TMA. The descriptions of the applications were as follows:
- mark ‘361: “The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods”.
- mark ‘362: “The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods”.
- mark ‘822: “The colour purple (Pantone 2685C), shown on the form of the application”.
The UKIPO dismissed the opposition against mark ‘362 but allowed the opposition in respect of marks ‘361 and ‘822.
Cadbury appealed the decision.
The new ruling
Disappointingly for Cadbury, the Court decided that the new definition for mark ‘361 was actually worse than the original one. Removing the word ‘predominant’ had not changed the fact that Cadbury’s application of the colour purple would be unlimited. The Court agreed with the hearing officer’s assessment and upheld Nestlé’s opposition to mark ‘361.
The Court then considered Cadbury’s appeal in relation to mark ‘822 and decided to uphold the appeal in respect of this mark. In 2019, the hearing officer had objected to this application on the basis that the manner of use of the colour, for example on packaging, advertising materials or applied to the goods themselves, had not been specified in the application. However, Mr Justice Meade said it was not necessary to specify in the application how or where the mark would be used.
Mr Justice Meade held that if the hearing officer’s interpretation of mark ‘822 had been adopted, then it would be inconsistent with judgments from the European courts, each of which had confirmed that a colour per se “without contours” can constitute a valid “sign” and therefore a registrable trade mark. He also made reference to the Court of Appeal ruling in 2013 stating that wording such as ‘predominant’ allowed ambiguity around what the mark actually was, whereas a single colour sign did not.
The take away from this judgment is that it is possible to register colours as trade marks providing that applicants:
- avoid a general description or representation of a colour mark that could be understood to protect various different appearances due to its lack of specificity.
- provide a clear and precise definition of how the colour will be used, even if that description extends to the whole surface of a product.
- Make sure that an application to register a colour trade mark consists of a sign, is capable of geographical representation and is capable of distinguishing the goods or services of one undertaking from those of other undertakings.