The High Court recently rejected a challenge by Nestlé to Cadbury's application to register its colour purple for chocolate.
It is established law that single colours can be registered as trademarks but what exactly will other manufacturers be prevented from doing by this registration and what does it take to 'own' a colour?
Cadbury applied to register their purple colour as a UK trademark in 2004 for goods reading "chocolate in bar form, chocolate confectionery, chocolate assortments, cocoa-based beverages, preparations for cocoa-based beverages, chocolate based beverages, preparations for chocolate based beverages, chocolate cakes". The application was rejected by the UK Trade Mark Registry as being "devoid of distinctive character" - that is, incapable of serving the function of a trademark and identifying the origin of the goods to which it was applied.
Cadbury filed evidence that the mark had “acquired distinctiveness through use”. This showed that the mark had been used so extensively that consumers had come to recognise it as identifying their goods alone. On this basis the mark was accepted. However the application was opposed by Nestlé in an attempt to limit Cadbury's monopoly as far as possible. Nestlé’s opposition was unsuccessful overall however they were able to limit the mark to only the following goods: "chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate".
Nestlé appealed the decision and claimed that the colour purple was not capable of being represented graphically and therefore could not function as a trademark. When Cadbury applied for the mark they provided an example of the colour and the description "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". Nestlé argued that this was not an application for a single trademark but a whole series of trademarks for different arrangements of the colour purple on packaging. The judge rejected the argument and found for Cadbury although the goods were limited further to "milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate".
This case shows that the UK Courts will limit a monopoly in a colour so it protects only the genuine and proven interests of the applicant. Cadbury's protection is not for purple generally but for the particular shade of purple it uses. Cadbury's trade mark will only be infringed if a shade of purple so similar to the 'Cadbury' purple as to be indistinguishable is used by someone else .Protection was rejected for many of the goods included in the original application such as chocolate assortments and cakes although evidence was produced of sales of those items in purple packaging over a significant period, showing that the strength of the association between a trade mark owner and a colour must be extremely high and the use of the colour in relation to particular products must be close to exclusive. The evidence in this case showed that other manufacturers used 'a' purple for cakes and chocolate assortments and Cadbury used other colours for its own chocolate assortments. As a result protection will encompass only goods consisting solely of milk chocolate or drinking chocolate.
What does this mean for other manufacturers? To stand a chance of securing a monopoly for a colour trade mark a colour must be narrowly defined and the precise shade must always be used; use of the colour by others must be prevented and good records of packaging, marketing and advertising materials should be kept for as long as possible prior to making the application.
Since Cadbury had almost a century of use of their purple to rely on, the case should prove to be an exception rather than the rule and the majority of colours will remain available for all to use.
First published in The Grocer , October 2012