We have previously commented on the ongoing battle between Cadbury and Nestlé over the colour purple. Cadbury has lost the final battle of the bars, ending a ten year legal battle when the UK Supreme Court refused Cadbury’s application to appeal against the Court of Appeal’s decision to refuse their UK trade mark application for the colour purple.

Lesson to be learnt

Based on the comments of the Courts, it is clear that you can obtain a registered trade mark for a colour, you just have to make sure that you fulfil certain criteria when applying for the same.  Obtaining a registration for a colour can give a huge competitive advantage, as shown by Cadbury fighting for so long to protect the colour purple.  Our attorneys have experience in protecting colours as trade marks and can advise on the steps which should be taken and the options available to you.

Background

The battle began with Cadbury applying for a UK trade mark application for a shade of purple (Pantone 2685C) for the goods “chocolate in bar and tablet form; eating chocolate; drinking chocolate; preparations for making drinking chocolate” see: (http://barkerbrettell.co.uk/protection-of-colours-as-trade-marks/).

Nestlé opposed Cadbury’s application on the basis that the mark was devoid of distinctive character, the mark designated a characteristic of the goods (namely the characteristic of having purple packaging), the mark had not acquired distinctive character through use and finally, Nestlé also submitted that the colour purple is commonly used in trade for the goods.

Cadbury conceded that the mark was not distinctive per se but contended they had acquired distinctiveness for the colour purple through use and so the mark should have been registrable.

Both the UK IPO and the High Court agreed that the evidence filed by Cadbury showed the mark had acquired distinctiveness in relation to the specific chocolate goods listed above.

Nestlé’s next move

Before even considering whether a mark is distinctive and not descriptive of a characteristic of the goods/services in respect of which protection is being sought, the trade mark application has to be checked to make sure that the trade mark be “a sign” which is “graphically represented”.

Nestlé appealed to the Court of Appeal on the basis that there had been errors made by the Courts in finding that the mark applied for by Cadbury had fulfilled those initial criteria, see: http://barkerbrettell.co.uk/cadburys-purple-battle-continues/.

The Court of Appeal upheld Nestlé’s appeal, rejecting Cadbury’s application.  In a summary, the Court of Appeal held that the hearing officer and trial judge had erred in principle by misinterpreting the verbal description of the graphic representation of the mark.

The use of the word “predominant” in the description could mean a number of different visual forms.  The word “predominant” implies a reference to other colours and/or matter which is not described in the application.  The Court of Appeal also held that if properly interpreted, this description would not constitute “a sign” which is “graphically represented” on the basis that the trade mark could cover other colours and/or matter which is not stated in the description.

Therefore, the mark is not graphically represented or verbally described in the precise manner required and so does not satisfy the initial filing requirements.

The Court of Appeal concluded that to allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. Further, it would also “offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage”.

Cadbury’s next move

Cadbury filed an application to the Supreme Court to appeal the ruling however, leave to appeal was refused.  The Supreme Court found that Cadbury’s application to appeal did not raise an arguable point of law and would give an unfair competitive advantage to Cadbury without the required clarity, objectivity and precision needed for a trade mark stating:

“it is not necessary to request the Court of Justice to give any ruling, because the question is irrelevant as the court’s existing jurisprudence already provides a sufficient answer.”

Check mate to Nestlé?  Not necessarily

Cadbury has no further avenues to appeal but it would be a brave company which decides to brand its chocolate products using a shade of purple (Pantone 2685C) for the packaging.

There is nothing to stop Cadbury reapplying for trade mark protection for the mark, just this time around, making sure the application, the mark is correctly graphically represented supported by a verbal description which is precise in manner.

Also, Cadbury will undoubtedly have common law rights in the specific colour purple for packaging of chocolate products which could be used.  The UK IPO and the High Court both conceded that the evidence filed by Cadbury showed the mark had acquired distinctiveness in relation to the specific chocolate goods. Such evidence could certainly be used to substantiate a passing off claim in the UK.

It may also be coincidence, but Cadbury have of course successfully blocked Nestlé s UK trade mark application for the shape of the KIT KAT four fingered chocolate bar.  It will be interesting to see if Cadbury launches a new chocolate bar… comprising of four fingers.