The Intellectual Property Office (‘IPO’) in the UK has issued a preliminary ruling which states that the iconic ‘Cadbury purple’ – Pantone 2865c – is sufficiently distinctive to enable Cadbury to register it as a trade mark.
Cadbury’s purple is already a registered trade mark in Australia, but this decision signals that the three-year trade mark battle with Nestlé over the exclusive rights to the use of the ‘Cadbury purple’ in the UK may be drawing to an end. While it is an interim decision, it has been suggested that it is unlikely to be changed when the IPO issues its final report. However, Nestlé may of course appeal the IPO’s decision.
Obtaining a trade mark over a single colour is a notoriously difficult feat. This is because it is difficult to establish that the use of a colour alone is capable of distinguishing particular goods or services. Indeed, when Cadbury first applied to register the colour back in 2004, the IPO initially rejected the application, but allowed the colour mark to proceed to registration in 2008 after Cadbury filed evidence of its distinctiveness acquired through use. This latest IPO decision was in response to a notice of opposition subsequently filed by Nestlé, objecting to the proposed registration.
The Registrar found that Cadbury had evidenced a long term use of the particular shade of purple (according to a Cadbury Spokesperson, it was chosen more than 100 years ago because it was Queen Victoria’s favourite colour, and the Cadbury brothers were loyal supporters) and concluded that the purple had thereby acquired the distinctive character required under section 3 of the Trade Marks Act 1994 (UK). This was a result of the way Cadbury used the purple to promote its chocolate bars and blocks which led the Registrar to conclude it was a distinguishing sign for Cadbury chocolate in bar and block form. A similar decision was reached with respect to Cadbury drinking chocolate. However, the Registrar concluded that the same was not true of Cadbury’s chocolate assortments, confectionary and cakes due to insufficient evidence of the long term use of the particular purple (Cadbury’s Roses, for instance, are packaged in a blue box).
The IPO’s decision reflects the public interest in not unduly restricting the availability of colours for other operators, as the Registrar noted that the greater the number of goods for which the trade mark is sought to be registered, the greater the risk of conflict with the public interest in undistorted competition. For instance, the effect of the Registrar’s preliminary decision to exclude chocolate assortments from the use of the trade mark is that Nestlé will be able to continue to use a similar purple colour on the packaging of its Quality Street assortment.
Despite the difficulty of obtaining trade marks for single colours, companies are increasingly registering their distinctive colours in recognition of the importance of colour to their brands. In Australia more than three hundred trade marks have been registered, including recently, the Whiskas’ purple: ‘Whiskas is purple’. Additionally, generating a great deal of press internationally at the moment is the legal stoush between Christian Louboutin and Yves Saint Laurent over the exclusive rights to Louboutin’s signature red-soled shoes: Roses are red, violets are blue… Louboutin’s appealing, Tiffany & Co care too.