The English Court of Appeal has sided with Nestlé in the latest instalment of the on-going branding war between Cadbury and Nestlé over Cadbury’s attempts to register a shade of purple in relation to chocolate based products, on grounds of lack of “clarity, precision, self-containment, durability and objectivity” of the mark as applied for.

The colour purple – to be or not to be

The saga started in 2004 when Cadbury applied to register a shade of purple as a trade mark in class 30 in relation to chocolate-based products. The mark applied for was shown as a rectangular purple block: and described as:

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 relevant legislative requirements for trade mark registration are set out in the Trade Marks Directive (implemented in the UK by the Trade Marks Act 1994). The key provisions are Article 2 which requires that a registered trade mark must consist of a sign capable of being graphically represented and Article 3 which sets out the grounds for refusal of trade mark registration which are signs which cannot constitute a trade mark and marks which are devoid of any distinctive character. The UK Intellectual Property Office initially refused registration on the grounds that the colour mark was inherently devoid of any distinctive character so fell foul of Article 3 of the Trade Mark Directive, but later accepted the application when Cadbury filed evidence of distinctiveness acquired through use of the colour in relation to Dairy Milk bars dating back to 1914.

circa 1920

In 2008 Nestlé opposed registration of the mark. However the Principal Hearing Officer allowed the application by Cadbury, subject to an amendment to the specification of goods to those goods in which it had acquired distinctiveness i.e. “chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for drinking chocolate.” Nestlé appealed the decision on the grounds that the colour mark was not a “sign” capable of “graphical representation” in accordance with Article 2 but did not try to overturn the Principal Hearing Officer’s findings in relation to distinctiveness. The case came before the English High Court in 2012 which also sided with Cadbury, save for limiting the registration to milk chocolate on the basis that evidence showed that Cadbury had acquired distinctiveness for milk chocolate products specifically rather than chocolate products generally. Nestlé appealed the decision to the English Court of Appeal.

Decision in the Court of Appeal

The Court of Appeal handed down its judgment on 4 October 2013 in which it overturned the decision of the Principal Hearing Officer and the High Court. See the full judgment. Essentially the case turned on the description of the colour mark as applied for. The Court of Appeal held that use of the words “or being the predominant colour applied” (emphasis added) meant the mark lacked specificity of appearance and opened the door to a multitude of other forms as a result of its implied reference to other colours and visual forms which had not been described in the application. The Court of Appeal distinguished the case from Libertel in which the Court of Justice of the European Union ruled that colour marks per se were capable of registration as that case concerned an application for a single specific colour (the application related to a mark shown as an orange block and described in the description as ‘orange’ unlike here). To allow the application in the present case would result in the registration of multiple signs with different permutations, presentations and appearances rather than a single sign and this meant the mark applied for was not a “sign” which is capable of “graphical representation” in accordance with Article 2. As well as lacking certainty, the Court of Appeal went on to state that this lack of certainty would give Cadbury a competitive advantage and put Nestlé and others at a disadvantage.

The result

Whilst colour marks per se are still registrable as a matter of European law, the decision of the Court of Appeal means that brand owners will need to be careful to ensure that applications are drafted precisely and avoid use of the word ‘predominant’ and other descriptions of the graphical representation of the mark which are overly broad and include by inference a number of presentations of the mark. The Court of Appeal hinted that it might have been possible to achieve certainty if the description read “applied to the whole visible surface, or to more than 50% of the area of the visible surface, of the packaging of the goods” although one can perceive a number of permutations of colour here which would also fall foul of the general principle espoused in the case. It remains to be seen whether Cadbury will appeal the decision and whether the English Supreme Court will provide much needed guidance on how brand owners can describe colour marks to avoid the application or registration being challenged for lack of certainty. The need for such guidance is likely to become all the more pressing if the European Commission’s trade mark reforms are passed, which would remove the requirement for a sign to have to be represented graphically. The practical implication of the decision for Cadbury is that it can re-file the mark with an amended description but it will lose the benefit of the 2004 priority date. In the meantime, as Cadbury has pointed out, the decision does not affect its common law rights to protect ‘its’ purple colour against copy-cats seeking to pass off as Cadbury. Source: Société Des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174 (04 October 2013)

This article was prepared by Farah Mukaddam (farah.mukaddam@nortonrosefulbright.com / +44 20 7444 5622) of Norton Rose Fulbright’s UK’s Intellectual property group.