Sweet victory for Cadbury's purple colour trade mark

by Claire Duckworth

The High Court has rejected an opposition brought by Nestlé against Cadbury's application to register a particular shade of purple as a UK trade mark for chocolate. The judgment affirms the decision of the Court of Justice of the European Union (ECJ) in Libertel1 that single colours per se can be registered as trade marks. It is important to note, however, that colour protections are sector-specific and much will depend on the context in which they are registered.

Fifty shades of purple

In October 2004, Cadbury applied to register the colour purple (Pantone 2685C) as a UK trade mark for goods in class 30, namely "chocolate in bar and tablet form" and various other chocolate products. Although initially rejected by the UK Intellectual Property Office (IPO) on the grounds that the mark was devoid of distinctive character, Cadbury filed evidence of distinctiveness acquired through use, citing research showing that consumers strongly associated the colour purple with Cadbury's chocolate. The mark was accepted and published in the Trade Marks Journal only to be opposed by Nestlé.

The Cadbury's trade mark (No. 2376879)

"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 IPO hearing officer dismissed Nestlé's opposition and allowed the application after making some amendments to the specification of goods which he ruled should be limited to "chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparation for making drinking chocolate." Nestlé appealed the decision and the case was put before Judge Birss QC in May 2012.

Nestlé's objections to the purple colour trade mark

Nestlé did not challenge the findings in relation to distinctiveness but contended that, in principle, Cadbury's mark was not a sign capable of being represented graphically, and was therefore not registrable under s 3(1)(a) of the Trade Marks Act 1994. The requirement for graphical representation is to ensure that marks are defined with clarity, precision and objectivity.

Nestlé argued that the mark was not registrable for the following reasons:

• Use of the language "whole or predominant" was indeterminate and presented alternatives.
• Use of the word "predominant" introduced a degree of subjectivity.
• Use of the word "predominant" meant that it recognised that another colour or colours would be present which in turn meant that the mark was for a colour combination and not spatially delimited.2

Furthermore, Nestlé argued that the inherent uncertainty in the Cadbury purple colour trade mark could lead to market abuse and anti-competitive effects.

A glass and a half

Despite extensive arguments by Nestlé, Judge Birss QC was not persuaded that the wording of Cadbury's purple colour trade mark meant that it should be distinguished from Libertel.3 The judge found that the reference to the word "predominant" did not present alternatives, make it subjective, or change the mark into a colour combination.

In summary, the judge stated that a colour per se, provided it is not bound by any shape or outline and is defined properly in words and with a Pantone code, is capable of being registered as a trade mark. However, in order to satisfy the condition of Article 2 of the Trade Marks Directive4 (implemented in UK law as section 1(1) of the Trade Marks Act 1994), the colour must also be a sign capable of distinguishing the goods or services of one entity from another.

Nestlé scored some concessions, however, as Cadbury's purple colour trade mark was limited to "milk chocolate". Judge Birss QC stated "In my judgment it would not be right to say that the colour purple is distinctive of chocolate generally". This limitation no doubt stems from the court's wish to limit anti-competitive effects in the marketplace and to prevent trade mark owners from gaining a monopoly in respect of goods for which they have not actually used the mark.

What does this mean?

While colour may constitute a sign, it cannot be presumed to be a sign and much depends on the context in which it is used. Given Cadbury's long-established association with the colour purple - namely for Dairy Milk, launched in 1905 - it was in a strong position to claim rights in the colour. Essentially, whether a business can register a colour as a trade mark will depend on whether the public associate this particular shade of colour with them for the goods or services for which they are seeking to register it.

Please click on the links below for the other articles in the January 2013 IP/IT newsletter

• Sky's NOW TV allowed to proceed as High Court rejects infringement claims
• World focus: Scandalous trade marks - an Australian perspective
• Football Dataco -v- Sportradar - ECJ ruling supports owners of database right
• RFU succeeds in forcing disclosure of ticket resellers
• No property in email: High Court sets the record straight

_Notes:

_{(1) Libertel Groep BV-v-Benelux-Merkenbureau, Case C-104/01.}

_{(2) In Heidelberger Bauchemie GmbH, Case C-49/02, it was held that a graphical representation consisting of two or more colours must be "systematically arranged by associating the colours in a pre-determined and uniform way".}

_{(3) Libertel Groep BV-v-Benelux-Merkenbureau, Case C-104/01.}

_{(4) Directive 89/104/EEC.}