Cadbury has lost a five-year legal battle with Swiss rival Nestlé. This week the Court of Appeal overturned a previous decision of the High Court that gave Cadbury an exclusive right to the famous purple colour it uses for its chocolate wrappers.
Cadbury began marketing Dairy Milk in a pale mauve colour in 1905 but it wasn’t until 1920 that its full range of Dairy Milk became purple. In 2004, Cadbury successfully registered this purple known as Pantone 2685C as a trade mark in relation to certain of its chocolate products. In 2008 Nestlé challenged the registration. The two companies have been litigating the issue ever since.
The decision - a technicality
When Cadbury applied for a trade mark in 2004, it included the following description:
"The colour purple…applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods."
It is a condition of registering a trade mark that it must be a sign capable of graphical representation. Rather than arguing that the colour lacked distinctive character, Nestlé took a more technical point and argued that the description did not relate to a “sign”. The Court of Appeal agreed. The second half of the description in the application had the potential of applying to more than one sign. It found that the word “predominant” could apply to different “permutations, presentations and appearances” – the result would not be an application to register "a sign", in the accepted sense of a single sign conveying a message, but to register multiple signs. One of the appeal judges said that allowing a registration “so lacking in specificity, clarity and precision” would “offend against the principle of certainty”.
The decision does not stop Cadbury from re-filing its trade mark application with a different description but it would lose its 2004 priority date.
This decision makes it clear that applications must be drafted very carefully to ensure that they meet the necessary level of clarity and specificity. It is also worth noting that Cadbury showed the Court guidance from the UK Intellectual Property Office issued in 1997 which indicated that the use of the word "predominant" was acceptable in the context of the description of colour marks as applied to the visible surface of named objects, such as packaging for goods. This guidance seems to have now been superseded.