In April 2012, we reported Cadbury's win to register the colour purple as a trade mark for the packaging of its goods in relation to chocolate in the UK, after a three year legal battle. Six months on, and following an opposition by Nestlé, the High Court has ordered Cadbury to limit its trade mark to just packaging for "milk" chocolate goods rather than "all" chocolate goods.

The Cadbury's case illustrates the specificity with which colour trade marks must be registered in relation to particular goods or services.

Nestlé's objections to the purple trade mark

The Cadbury's trade mark was a shade of purple for packaging for chocolate goods and was registered for "chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate".

Nestlé objected to the registration of Cadbury's trade mark on several grounds, including that the trade mark, being for a colour, was not capable of being represented graphically.

The High Court's Decision

The High Court held that:

  1. Single colour marks are capable of being registered. The requirement for graphical representation is to define the mark with clarity and precision. Cadbury could register its purple mark provided that, in the context in which it is used, it was defined properly in words, with a Pantone number.
  2. The specification of the goods should be limited to milk chocolate goods. The shade of purple was distinctive for Cadbury's milk chocolate rather than all chocolate i.e. not Cadbury's dark Bourneville chocolate, for which Cadbury uses predominantly red packaging.

Mishcon's View

The Court in Nestlé v Cadbury confirmed that a mark consisting of a single colour can be registered as a trade mark. However, this will depend on the registration including a proper definition in words and a specific Pantone reference.

Nestlé v Cadbury does emphasise the fact that it is important to put a single colour mark into context in order for it to be registrable as a trade mark - i.e. to specify exactly how the colour trade mark will be applied to the goods and for what goods the trade mark is registered.

The Court's decision is a fair limitation of Cadbury's trade mark in circumstances where Cadbury's could not show the predominant use of purple for any chocolate other than "milk chocolate". This decision no doubt results from the Court's wish to encourage competition in the marketplace and not to give trade mark owners a monopoly, where that owner has not actually used the mark in respect of certain goods.

Whether you can register a colour as a trade mark really boils down to the simple question of "Does the public associate this particular colour predominantly with me for the goods/services for which I am seeking to register it?"