Cadbury has been unsuccessful in its most recent attempt to protect its UK purple trade marks for its chocolate wrappers, notably used for its well known Dairy Milk brand.
Cadbury initiated this action before the UK Registrar of Trade Marks seeking to immunise a 1995 registration for a purple trade mark from invalidity attacks. This was a preventative action, presumably in response to Nestle’s successful objection in 2013 to a similar Cadbury purple UK mark.
In this earlier 2013 case, the Court of Appeal had held that Cadbury’s trade mark had not been validly registered. The mark was for the colour purple both (i) “applied to the whole visible surface”, or (ii) “being the predominant colour applied to the whole visible surface”. The Court of Appeal decision turned on the fact that the mark constituted more than a singular sign, with the Court noting: “there is wrapped up in the verbal description of the mark an unknown number of signs”.
To prevent this reasoning being applied to other similar marks, and to avoid those marks becoming subject to invalidity attacks, Cadbury sought to alter its 1995 registration for a purple mark.
Cadbury employed creative legal arguments to overcome s.44 of the UK Trade Marks Act 1994, (the Act), which prevents the alteration of existing marks. Cadbury argued that the registration amounted to a series mark with two separate marks in accordance with s.41 of the Act. In one mark, the colour purple is applied to the “whole visible surface” and, in the other, purple is “the predominant colour applied to the whole visible surface”. Cadbury then relied on s.28 (5) of the Trade Mark Rules 2008 to seek to eliminate the potentially vulnerable second mark of the series (having regard to the previous 2013 Court of Appeal decision), thereby leaving a single mark that was validly registered.
The Registrar refused Cadbury’s request for three reasons. First, the mark was not registered as a series mark so cannot be treated as such now. Secondly, there could be no deletion of a mark because there was no validly registered mark to delete. Finally, regardless of its name, any deletion would amount to an alteration, as prohibited by s.44 of the Act.
This action was appealed to the Chancery Division in the High Court, which agreed with the Registrar and dismissed Cadbury’s appeal. Ultimately, Cadbury’s pre-emptive defence strategy proved unsuccessful. The validity of colour marks is very topical in the food and pharma sectors and the decisions of the courts and relevant offices are interesting to monitor.