On 1 October 2012, the High Court rejected an appeal by Nestlé against its unsuccessful attempt to prevent Cadbury obtaining a trade mark registration for the colour purple. The Judge upheld the decision of the United Kingdom Intellectual Property Office (UK-IPO) but did restrict Cadbury’s monopoly in Pantone 2685C to "Milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate".
Nestlé, who sell “The Big Purple One”, an oversized version of the Quality Street favourite in the purple wrapper, opposed Cadbury’s application on a number of grounds. In particular, Nestlé alleged that the colour purple did not constitute a sign that was eligible for trade mark protection, as it could take numerous forms of appearance, and also lacked the necessary distinctive character to function as a trade mark.
Colours are notoriously difficult to register as trade marks as a colour by itself does not initially have a distinctive character and can only acquire such character in relation to a business’s goods and services through substantial use. Cadbury had provided such use to the satisfaction of the UK-IPO who accepted the colour had acquired distinctiveness and thereby served to distinguish Cadbury's goods from competing goods.
Nestlé objected to this decision and the evidence of acquired distinctiveness previously submitted along with additional evidence was considered in detail at the hearing of first instance.
The UK-IPO Hearing Officer was of the opinion that the strength of the evidence allowed him to find that purple is distinctive of Cadbury for chocolate per se and drinking chocolate. However, despite accepting that there was a general association between Cadbury and the colour purple, the Hearing Officer felt that the association between Cadbury, the colour and chocolate assortments (being a blend of chocolate and other ingredients) had been blurred by Cadbury’s use of other colours for the packaging of such goods (such as the Roses selection) to the point that purple by itself did not have a distinctive character in this context.
Although this decision must have given Nestlé some comfort with regard to its continued inclusion of "The Purple One" in its Quality Street assortment (the Hearing Officer remarking that the colour of Nestlé's wrapper is indistinguishable from the one applied for by Cadbury), it appealed the decision of the Hearing Officer to the High Court.
On appeal, Nestlé did not challenge the Hearing Officer's important findings on Cadbury's use and confined its grounds to claims that the mark applied for did not satisfy the basic criteria for trade mark protection established through case law.
Central to these grounds were arguments based on the written description of the mark i.e. "The colour purple (Pantone 2685C) 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 the emboldened wording, amongst other things, meant Cadbury's application was not for a pure colour mark but a so-called colour combination mark and accordingly did not meet the specific criteria developed for such marks, claimed is a prerequisite to registration.
This argument was given short shrift by the Judge who agreed with the Hearing Officer's view that no such prerequisite applied to Cadbury's application and that the written description, in any event, was not strictly necessary but did, in fact, help increase legal certainty in the event of infringement proceedings.
This decision confirms that a colour in the abstract can enjoy trade mark protection if the Applicant can provide evidence of use that proves the colour now identifies the goods and/or services of their business. It also indicates that marks which have proceeded to acceptance on the basis of acquired distinctiveness are well placed to defend third party challenges to their monopoly claim and the better the evidence, the better the defence. Nestlé were effectively reduced to arguments based entirely on legal principle in the Appeal due to the strength of Cadbury's evidence of use.