In an appeal by Nestlé against Cadbury's trade mark registration for the colour purple, the High Court has allowed the colour mark to remain on the Register but has restricted the specification to cover milk chocolate only, rather than allowing the wider "chocolate" which had previously been allowed by the Registrar in respect of the types of goods listed in the specification.
The case reminds us of the strength of trade marks and their ability to create perpetual monopolies in particular areas. The law is careful not to allow unjustified monopolies and therefore the registration of colours is dealt with very carefully (as are also registrations for common words).
- Colours can be registered as trade marks, several CJEU decisions support this, but there must be evidence that the colour is acting as a "sign" not just a property of the goods on which it is used.
- The specification for any colour mark application will be carefully examined and limited to the areas where there is evidence that the colour plays the role of a sign.
- The colour must be specifically identified on the Register – the use of Pantone numbers is recommended.
The case concerned an application by Cadbury in 2004 to register a trade mark consisting of the colour purple along with a description of it as the colour "Pantone 2685C" to be applied to the "whole visible surface, or being the predominant colour applied on the whole visible surface, of the packaging of goods". The goods specified were to be within Class 30 which includes various chocolate products.
In August 2008 Nestlé opposed the application. The Principal Hearing Officer allowed the application though limited the specification of goods to products only containing chocolate based on his findings on the evidence of distinctiveness.
Nestlé appealed this decision largely on points of principle rather than on evidence of distinctiveness, the issue of whether a monopoly could be granted for a particular colour in relation to a particular foodstuff (here chocolate) products being one of substantial importance to all FMCG businesses but in particular to one equally involved in chocolate production. HHJ Birss, sitting in the High Court, concluded that the trade mark was valid (although limiting it to "milk chocolate" products instead or the original "chocolate"). HHJ Birss provided a helpful overview of the Court of Justice of the European Union (CJEU) jurisprudence on colour and smell marks in relation to their capacity to fulfil the basic criteria of a registrable trade mark, which are that the mark in question
- be a sign (rather than a property of a product),
- capable of graphic representation (clearly understandable on the Register) and
- capable of distinguishing the goods (or services) from those of another trader.
The judge noted that "exotic" trade marks such as colours and smells give rise to greater conceptual problems than conventional trade marks. The question came down to whether Cadbury, even if they had shown that the public associated the colour purple with Cadbury's chocolate, could obtain a trade mark registration for that colour per se.
The principle concern for courts when considering trade mark registrations for widely used words has always been the issue of the potential to create an unjustified and perpetual monopoly, unless a trade mark is kept within its proper sphere. These concerns are equally applicable to application for colour trade marks.
However, the CJEU has made a commitment to the protection of colour marks, even where not spatially defined (see the CJEU decisions in Libertel C-104/01 and Heidelberger C-49/02) where other criteria are satisfied.
Although pure colours are per se in principle capable of being a registered trade mark, a colour will only be registrable where the context of use makes the colour a "sign", rather than simply a property of the product being sold. In the Dyson case (C-321/03) for example the mark described as "a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation" was held to be a property of the goods rather than a sign. The purpose of the sign requirement is to prevent an unfair competitive advantage which would be an abuse of trade mark law.
In relation to the graphic representation requirement, HHJ Birss looked at the CJEU case on the registration of smells, Siekmann, which established that to fulfil this criteria, a mark must be described on the Register clearly, precisely in a self-contained, easily accessible, intelligible and objective fashion. Thus a colour sample alone does not constituent a graphical representation, but a sample along with a description in words and a designation of the colour using an internationally recognised identification code (such as a Pantone designation here) may be considered to constitute a graphic representation. Cadbury's registration described the colour as "applied to the whole visible surface, or being the predominant colour applied to the whole visible surface" of the packaging of the goods. HHJ Birss found this to be equivalent to the single colour mark application which was the subject of Libertel (and was deemed sufficient to fulfil the graphical representation requirements).
The evidence in before the Registry had been that the colour purple was distinctive for Cadbury's milk chocolate products but HHJ Birss found that it was not more widely distinctive for other types of chocolate (such as plain or white chocolate). The specification was therefore limited to "milk chocolate" in respect of the types of chocolate product encompassed therein.