The recent ruling of the High Court in the United Kingdom in the matter of Société des Produits Nestlé SA v Cadbury UK Limited [2012] EWCH 2637 (Ch) has granted Cadbury the exclusive right to a specific shade of purple (Pantone 2685C) for “milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate [and] preparations for making drinking chocolate”.

In 2004, Cadbury applied to register the colour purple as a trade mark for chocolate in the United Kingdom. The examiner at the UK Intellectual Property Office objected to the application on the grounds that the trade mark was devoid of distinctive character. However, after Cadbury filed evidence of the distinctiveness of its purple colour mark, acquired through use, the mark was accepted and advertised for opposition purposes. The application was opposed by Nestlé but the hearing officer found in favour of Cadbury and Nestlé accordingly appealed to the High Court.

The thrust of Nestlé’s appeal was that the mark applied for was not a sign capable of being represented graphically and was, as such, not registrable as a trade mark. The argument was that a mark which covers a multitude of possible visual forms, which are dependant on human subjectivity, impression and other factors cannot constitute a sign as it is inherently uncertain.

The court, however, having considered European case law relating to so-called “exotic” trade marks, in particular colour marks, confirmed that it is clearly established in the case law that single colours per se are capable of being signs and can therefore be registered as trade marks. Important considerations would be the context of the use of the colour mark and evidence of a reputation in it. It was not disputed that Cadbury enjoys an extensive reputation in its particular shade of purple, which it has used in respect of its milk chocolates for 100 years, the colour being said to have been chosen as a tribute to QueenVictoria.

In the circumstances, given that the trade mark applied for was clear and specific, was a sign that could be represented graphically (with reference to the particular pantone number), and that the specification of goods sought was not broad (although, the court agreed with Nestlé that it should be narrowed specifically to milk chocolate as Cadbury does not use purple packaging in respect of dark and white chocolate), and since Cadbury had established that it enjoys an extensive reputation in the purple colour, which the public associates with it, the court found in Cadbury’s favour.

This does not mean that colour marks should not be approached without caution, however. The court made reference to the principle that, unless the register of trade marks is kept “firmly in its proper sphere”, the result may be unjustified perpetual monopolies. The court made reference to the well-known passage from the judgment of Cozens-Hardy MR in 1909, which reads as follows:

“Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure”.

The court cautioned that what was said of the great common of the English language 100 years ago might be said today of the world’s “great common of the visible electromagnetic spectrum”.

In the fast-paced and ever-changing modern market place, with the increasing prominence of the internet and social media networks, which engage consumers visually, visual elements, such as colour, are naturally vital communication and marketing tools, perhaps more so than ever before. The appeal of monopolising a colour, and the market advantage that this would potentially bring, is obvious. It is therefore imperative that colour marks are examined with caution, with a view to avoiding unjustified monopolies and the limitation of development in the relevant art or industry. An additional consideration is the so-called “colour depletion doctrine”. Although the spectrum of colours is broad, it is not infinite and, since our trade mark law recognises that the use of confusingly similar marks may amount to trade mark infringement, practically, the proprietor of a particular shade of purple may be able to prevent a competitor from using a similar shade, albeit not identical, thereby monopolising the colour purple in general, rather than simply a particular and specific pantone. Where a number of colour marks have been registered in respect of particular goods, competitors may find the colours available to them when developing their branding to be “depleted”, with few suitable colour options left that will not open them to the risk of infringement proceedings.

That being said, colour marks clearly can be capable of registration and each particular case must be considered on its merits. An entirely closed off approach to colour marks would be as unfavourable as an overly lenient one. Indeed, in circumstances where a substantial reputation is enjoyed in a particular colour, and the mark being applied for, having a limited specification, has been defined with clarity and precision in an unequivocal, intelligible and objective manner which, it is submitted, was the case in respect of Cadbury’s trade mark application in the UK, the mark should be allowed to proceed to registration.

Interestingly, a few years ago, Cadbury was refused registration of the colour purple in South Africa in an opposition before the Tribunal of the Registrar of Trade Marks, filed by Beacon Sweets & Chocolates (Pty) Limited. The crux of presiding officer’s reasoning was that Cadbury’s trade mark application was found to be too vague. The application had initially been filed for “chocolate confectionery” and without reference to the particular pantone number. The endorsement simply read “the mark consists of the colour purple (substantially as shown in the representation affixed to the form of application), as applied to labels or packing for chocolate confectionary products”.

The applicant subsequently restricted its specification to “chocolate confectionary in moulded slab form” and amended its endorsement to “the mark consists of the colour purple (substantially as shown in the representation affixed to 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 also applied to include reference to the pantone number as an endorsement. These amendments were irregular as no notice was given to the opponent, but the court decided to allow them.

The presiding officer, having considered European case law, found that the colour must be used or applied as a mark in some or other well-defined form and this was a far-cry from stating that colour, in isolation, without being used in a distinct fashion, constitutes a mark. The colour mark would have to be represented visually.

The presiding officer seemed to follow the line of thinking argued by Nestlé in the UK, namely that a colour per se could cover a multitude of different visual forms and that the mark would therefore be too indistinct to warrant registration. It was held that the mark applied for was simply the colour purple and that even the pantone number was insufficient. In addition, the endorsement accompanying the representation of the colour was held to be so vague that it would not be possible to identify the mark without reference to the applicant’s packaging. The mark applied for was therefore not clear and intelligible simply from the register.

It was found that the application did not constitute a mark capable of registration and was therefore refused.

South African trade mark applicants seeking to register colour trade marks would therefore be well advised to ensure that their applications are specific, precise, intelligible and clearly defined, in relation to a narrow specification of goods or services, and that they are applied for in relation to some kind of graphic depiction, such as an image, line or character. Provided those guidelines are followed and the necessary requirements met, proprietors may just find themselves able to own their little piece of the rainbow.