In Société Des Produits Nestlé S.A. v Cadbury UK Ltd  EWHC 2637, the High Court of England and Wales has dismissed attempts by Nestlé to prevent the registration by Cadbury of the colour purple for various forms of milk chocolate.
This case concerned a 2004 United Kingdom trade mark application by the owner of the Cadbury brand of chocolate, Cadbury UK Limited (Cadbury). Cadbury applied for a trade mark to protect its use of the colour purple on its chocolate products. Initially rejected by the UK trade mark registry, Cadbury filed evidence that the mark applied for, which was described as the colour purple (Pantone 2685C), had acquired distinctiveness through use. This evidence was accepted in respect of “Chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate” and the trade mark published on 30 May 2008. In August 2008, Société des Produits Nestlé (Nestlé) opposed the trade mark application. This opposition was rejected by the registry, leading Nestlé to appeal to the High Court.
The main part of Nestlé’s appeal centred on whether the mark as applied for was a sign capable of being represented graphically. Nestlé argued that this was not the case and, accordingly, the mark should not be registered. His Honour Judge Birss QC began by setting out the relevant sections of the Trade Marks Act 1994 and considering the relevant case law. In particular, he noted Sieckmann (C-273/00), in which the Court of Justice of the European Union set out the criteria for when a mark can be said to be capable of being represented graphically, and Libertel (C- 104/01), which applied the Sieckmann criteria to the question of whether a colour could be registered as a trade mark. The Sieckmann criteria can be summarised as a need for a description to be clear, precise, self contained, easily accessible, intelligible and objective.
Nestlé’s argument focused on the fact that, in the description of the trade mark, Cadbury had described the colour as “being applied to the whole visible surface, or being the predominant colour applied to the whole visible surface”. Nestlé reasoned that this made the mark subjective, and thus fell foul of the Sieckmann criteria, in particular that the description of the mark be objective. The judge disagreed, concluding that this language did not introduce any vagueness into the description of the mark. Accordingly, Nestlé’s appeal was dismissed.
The registration of colour marks per se raises a number of concerns. Granting a monopoly of this sort can give one player in a market a significant competitive advantage and so should not be done lightly. The registrar’s approach reflects these concerns, requiring Cadbury to prove it had acquired distinctiveness in the mark and then limiting its specification accordingly. Cadbury had applied originally for a much wider specification.
The use of Pantone numbers to describe the mark in such a way that satisfies the Sieckmann criteria is now well established. Particularly in the light of the recent ruling of the CJEU in IP Translator, however, parties would be well advised to exercise caution when introducing into either the description or specification of a mark language that could be construed as uncertain or ambiguous.