Nestlé wins latest battle with Cadbury over the colour purple in the UK

On 4 October 2013, the Court of Appeal of England & Wales upheld an appeal brought by Nestlé in relation to Cadbury’s application to register the colour purple as a trade mark in respect of the packaging of chocolate. Whilst Cadbury’s application was for a specific shade of the colour purple (namely, Cadbury’s famous Pantone 2685C), the Court of Appeal found that the verbal description of the colour claimed by Cadbury was “too subjective, too imprecise, and inadequately clear and intelligible to be capable of registration”.  Accordingly, Cadbury’s trade mark application for the colour purple in the UK (along with its October 2004 priority date) will now lapse, unless the decision is appealed and overturned by the European Court.

The decision does not spell an end for colour trade marks in the UK, and should be regarded as separate from colour trade mark rights Cadbury has obtained in other countries such as Australia.  The case turned on a technical interpretation of the words used to describe Cadbury’s application for the colour purple in the UK. However, the decision appears to have been driven by policy considerations, and may highlight how certain judges remain uncomfortable with the concept of conferring a monopoly over a single colour.

 

History of colour trade marks in Europe

Since 1993, European Union trade mark law has provided that a trade mark is registrable if it is:

(a)    a sign;

(b)   capable of graphic representation; and

(c)    capable of distinguishing the goods or services of one undertaking from another.

A decade later, the European Court needed to consider whether a single colour could meet these requirements on its own. In the seminal 2003 decision of Libertel Grouep BV v Benelux-Merkenbureau, which concerned an application to register the colour orange as a trade mark in respect of telecommunications services, the European Court found that a single colour could be registered as a trade mark per se, provided that “it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

In this case, the Court found that the “objectivity” requirement may be satisfied by describing the colour by reference to an internationally recognised colour identification code, for example, a code in the Pantone Matching System. Since then, identification of a specific Pantone code has been considered an important requirement for most colour trade mark applications in the European Union (as well as in other jurisdictions, including Australia).

However, as the recent Cadbury case in the UK shows, identification of a specific Pantone code may not be enough to meet the specificity requirements for registration of a colour trade mark.

 

Cadbury’s application to register purple in the UK

In 2004, Cadbury applied to register the colour purple as a trade mark in respect of chocolate pursuant to the Trade Marks Act 1994 (UK) (which adopts the general requirements for registration under European law, set out above). The shade of the colour purple claimed to be distinctive of Cadbury’s chocolate is the same around the world, being Pantone 2685C.

Cadbury’s application in the UK was drafted slightly differently to its international equivalents (including applications in Australia, a number of which have been registered) as it described the colour purple as follows:

The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”, the goods being chocolate (including drinking chocolate) in class 30.

On appeal, the Court needed to consider whether Cadbury’s application lacked specificity because of the use of the word “predominant” in the description of the mark.

Nestlé submitted that the word “predominant” is a reference to the ‘strongest’ or ‘main’ colour, which necessarily means that there will be another colour (or colours) in use. In Nestlé’s view, determining whether purple is the “predominant” colour would inevitably require a subjective assessment of the impact of various colours on the consumer, and there could be multiple interpretations in that regard. Accordingly, Nestlé argued that Cadbury’s application was too vague and subjective to constitute a single sign (as required by the legislation) that is capable of registration. The Court of Appeal agreed.

Sitting as Judges of the Court of Appeal, Sir John Mummery and Sir Timothy Llyod (with whom Lord Lewison agreed) expressed their concern with the use of the word “predominant” in Cadbury’s trade mark application as follows:

  • The use of the word “predominant” opens the door to a multitude of different visual forms as a result of its implied reference to other colours and other visual material not displayed or described in the application (at [50] per Sir Mummery).
  • The description would have been more certain if it specifically read “applied to more than 50% of the visible surface”.
  • However, if the contrast is between two different colours, one which is stronger or more eye-catching, or is applied to a more prominent part of the packaging, then this might be seen as predominant even if it was applied to less than 50% of the surface of the goods (at [63] per Sir Llyod).
  • Accordingly, the word “predominant” is too subjective, too imprecise and inadequately clear and intelligible to be capable of registration (at [63] per Sir Llyod).

Whilst the Cadbury case ultimately turned on a technical interpretation of the description of the mark, certain statements made by the Judges in obiter raised our eyebrows about the possible policy drivers behind the decision. In particular, we found these comments by Sir John Mummery interesting:

As the registration of a trade mark creates a form of intellectual property conferring a potentially perpetual monopoly, excluding everybody else from use in various ways, the point of principle has some public importance.

Speculation by this court about the future direction of trade mark law at this stage of development would not help anyone.

To allow a registration so lacking in specificity, clarity and precision of visual appearance would … offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage.

The Court recognised the impact that the decision might have on existing UK registered trade marks which utilise the language of “predominant colour” in their description, as those marks are now potentially vulnerable to revocation.

Finally, as the first major decision in the UK to consider the registrability of a colour per se, the case may indicate a particular direction that English Courts are likely to take in the future.

 

Where to from here

Exotic marks have been recognised as being capable of registration in Australia since the introduction of the 1995 Trade Marks Act, and there are presently:

–          268 registered colour trade marks (including Cadbury’s purple marks);

–          798 registered shape trade marks (including for the shape of the Coca Cola contour bottle);

–          43 registered sound trade marks (including the word Yahoo sung in a yodelling style); and

–          1 registered scent trade mark (consisting of a Eucalyptus Radiata scent for golf tees)

not to mention a substantial number of pending applications.

A number of these marks (although not any by Cadbury for colour purple) use the words “predominant colour” in the description of the trade mark.

The meaning of the word “predominant” in this context has already received judicial consideration in Australia, albeit without any finding that such terminology might be problematic. In the 2006 case of Woolworths v BP plc (No 2), the Full Federal Court needed to consider BP’s application for the colour green “applied as the predominant colour to the fascias of buildings, petrol pumps, signage boards”.  Whilst Heery, Allsop and Young JJ refused BP’s application to register the colour green, their Honours did so largely because BP had failed to establish, from an evidentiary point of view, that it had used each of the trade marks it had applied for, as at the priority date, to such an extent as to make the trade mark distinctive of BP’s goods and services.

Nevertheless, the Cadbury case is a reminder to all those that draft trade mark specifications to take particular care when drafting endorsements for exotic marks. Otherwise, judges inherently uncomfortable conferring a monopoly over a colour, shape, sound or scent might find a technical reason to refuse registration.

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About the Author

James RussellJames is a parochial Melbournian solicitor who loves a good stoush over IP. Particularly interested in copyright law and the protection of content on the Internet, James is also skilled in online marketing speak, and will explain a metatag or the Gestalt effect to anyone game enough to listen. In his spare time, James will either be surviving another deplorable display by the Demons, or will be filling up his freezer with fruits of the sea, caught with the aid of a rod, spear or tank.View all posts by James Russell