Sarah Jeffery July 25 2022 High Court ruling on approach to registrability of colours as UK trademarks Pinsent Masons | Intellectual Property - United Kingdom Sarah Jeffery Intellectual Property FactsDecisionCommentIn this clear and concise judgment,(1) Justice Meade in the High Court has explored how and when a colour can constitute a "sign" for the purposes of section 1(1) of the Trade Marks Act 1994 (TMA), thereby helping applicants to define the acceptable parameters of a colour-based trademark application.FactsIn Société des Produits Nestlé SA v Cadbury UK Ltd(2) (referred to by Meade J in the present decision as "CoA 2013"), Société des Produits Nestlé SA (Nestlé) had opposed an application filed by Cadbury UK Ltd (Cadbury) for a specific shade of purple described in the application 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.It was held that "the predominant colour applied to the whole visible surface . . . of the packaging of the goods" did not satisfy the requirement of a "sign" that was "represented graphically" for the purposes of article 2 of Directive 2008/95 (then in force). The mark lacked the required clarity, precision, self-containment, durability and objectivity to qualify for registration. The key objection here was that the term "predominant" was too vague. It did not specify the degree to which the colour purple would cover the packaging, meaning that the mark could be used in a multiplicity of forms, together with other unspecified colours.Later in 2013, Cadbury proceeded to file three further applications at the UK Intellectual Property Office (UKIPO) in class 30, each for a different representation of the same colour purple. All three applications were opposed by Nestlé in 2013, including on the ground that the marks did not fulfil the requirements of a sign under section 1(1) of the TMA.The three marks applied for and their treatment by the UKIPO hearing officer can be summarised as follows.Application numberDescription of markDecision of hearing officerUK00003019362 ('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."Opposition failed and application permittedUK00003019361('361)"The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods."Opposition succeededUK00003025822('822)"The colour purple (Pantone 2685C), shown on the form of application."Opposition succeededCadbury appealed the decision in relation to '361 and '822.Long before the appeal was heard, a settlement was reached between Nestlé and Cadbury relating to Cadbury's use of the colour purple. Nestlé therefore chose not to take part in the appeal other than as an observer. However the Comptroller-General of Patents Designs and Trade Marks considered that the issue was sufficiently important to future application of the law and so intervened in the appeal.Nestlé had argued in its opposition to '361 (among other points) that the reference in the description to the colour purple being "applied to the packaging of the goods" referred to a means of configuration or representation of the colour which would not be shown on the trademarks register and which could comprise a potentially limitless number of different signs/means of representation.DecisionMeade J agreed with the hearing officer that '361 suffered from the same potential for multiplicity of forms as the mark discussed in CoA 2013, by not referring at all to the degree to which the colour purple would be applied to the packaging. Meade J expressed the view that "the formulation of '361 is worse than that rejected in CoA 2013".On that basis, Meade J agreed with the hearing officer that the opposition to application '361 should succeed and the appeal therefore failed.However, Meade J disagreed with the hearing officer that '822 suffered from the same multiplicity of forms problem. The hearing officer had objected to this application on the basis that the manner of use of the colour (eg, on packaging, advertising materials or applied to the goods themselves) had not been specified in the application. Meade J disagreed, holding that this was an application for a mark for the colour purple per se. In his view, it was not necessary to specify in the application how or where the mark would be used. Use of the colour was use of the sign, whether used on goods, packaging, business documents or elsewhere. The sign was not different from one context to another. Meade J held that if the hearing officer's interpretation of '822 was correct, it would mean that a colour per se mark could only be validly registered in conjunction with a limitation to a single manner of use. This approach 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 trademark.Further, while wording like "predominant" (the issue in CoA 2013) allowed ambiguity around what the mark actually was, a single colour sign did not.Meade J went on to say that he found it hard to see why the decision in relation to '822 "would not apply to, at least, any consumer goods", thereby arguably broadening the scope of precedent set by this judgment.CommentThere are a number of takeaways from this judgment, the most significant of which is probably that the rejection of '361 should not be interpreted to mean that colour marks cannot be registered. The rejection of the opposition for '822 shows that they can. '361 failed for its lack of specificity, not because it had sought to specify application of colour. Therefore, applicants for colour marks should ensure that the mark they seek to register gives clear specificity by stating how the colour is applied to the goods in question.Further, Meade J very helpfully set out a checklist for applicants for colour marks. Each point references relevant European case law and, if followed, will result in the best chance of an application to register a colour mark being successful. The points made can be summarised as follows:An application to register a colour trademark must:consist of a sign;be capable of graphical representation; andbe capable of distinguishing the goods or services of one undertaking from those of other undertakings.(3)Applicants should avoid a description or representation of a colour mark that could be understood to protect various different appearances. This potential for a multitude of forms risks giving a trademark proprietor an unfair competitive advantage over competitors and so is likely to be an obstacle to the mark being registered.(4)The mark applied for must satisfy the requirements of clarity, intelligibility, specificity, precision, accessibility, uniformity, self-containment and objectivity.(5)Colours are usually a means of decorating things and are not normally capable of being a "sign". A sign conveys a message and therefore a colour based on a sign is only capable of being registered as a trademark if it provides such a message about the source of goods or services.Depending on the facts and circumstances of the case, colours, or combinations of colours, designated in the abstract and without contours and used in relation to a product or service are capable of being a "sign".In a mark consisting of two or more colours designated in the abstract and without contours, the representation of the mark must be precise and the colours arranged in a predetermined and uniform way.(6)Inclusion of a recognised colour reference in the trademark application, such as a Pantone or RAL number, is critical to the likelihood of success of the application. However, a colour code alone may not be sufficient to overcome potential deficiencies present in the wording describing placement of the colour.Clear and precise definition of how the colour will be used is therefore imperative (even if that description extends to the whole surface of a product).For further information on this topic please contact or Sarah Jeffery at Pinsent Masons by telephone (+44 20 7418 8250) or email ([email protected]). The Pinsent Masons website can be accessed at www.pinsentmasons.com.Endnotes(1) Cadbury UK Ltd v Société des Produits Nestlé SA (Comptroller-General of Patents, Designs and Trade Marks intervening)  EWHC 1671 (Ch).(2)  EWCA Civ 1174.(3) Following Libertel Groep BV v Benelux-Merkenbureau, Case C-104/01  ECR 1-3793.(4) Following Dyson v Registrar of Trade Marks, Case C-321/03  ECR 1-687.(5) Following Sieckmann v Deutsche Patent- und Markenamnt, Case C-273/00  ECR 1-11754.(6) Following Heidelberger Bauchemie GmbH v Bundespatentgericht, Case C-49/02  ECR 1-6129.