The Court of Appeal has overturned previous decisions of the UK Intellectual Property Office and the High Court and held that Cadbury’s UK trade mark registration for the colour purple is invalid. The court found that the mark does not meet the basic criterion of a sign capable of being protected as a trade mark under EU trade mark law.
Subject to any appeal, the decision creates significant uncertainty over the validity and enforceability of colour (and potentially other non-traditional) trade marks in the UK and Europe, particularly those which have proceeded to registration on the basis of an accompanying description setting out the possible applications of the mark in relation to the claimed goods or services.
Brand owners should review their registered trade mark rights closely and assess potential vulnerabilities based on this decision. Specific trade marks should be applied for to fill any gaps in protection.
The decision, handed down on 4 October 2013, is the latest development in the long-running dispute between Cadbury UK Limited (Cadbury) and Société des Produits Nestlé S.A. (Nestlé) in relation to the registrability of Cadbury’s 2004 trade mark application for the colour purple for various chocolate products in class 30.
In the lead judgment, Justice Mummery held that Cadbury’s application lacked ‘the required clarity, precision, self-containment, durability and objectivity to qualify for registration’. He accepted that the application claimed a specific shade of colour which could be accurately represented by reference to Pantone Reference 2685C and therefore met the threshold requirement of durability laid down in previous decisions including Libertel and Heidelberger.
However, because the description of the mark included a reference to the colour being applied as the ‘predominant’ colour of the packaging of products claimed in the specification of goods, the mark did not constitute ‘a sign’ which was ‘graphically represented’ as required by Article 2 of the Trade Marks Directive 2008/95/EC (section 1 of the Trade Marks Act 1994). The application covered multiple signs with different permutations, presentations and appearances which were neither graphically represented nor described with any certainty or precision, or at all. Granting the registration would ‘offend against principles of certainty’ and give Cadbury a competitive advantage over its competitors which could not be justified from a policy perspective.
It has been reported that Cadbury is considering an appeal of the decision and a possible reference to the Court of Justice of the European Union.
The decision creates significant uncertainty over the validity and enforceability of colour trade marks in the UK and Europe, as many of the marks which have historically been accepted for registration have been accompanied by written descriptions outlining various applications of the mark to goods or services claimed in the application. One of Cadbury’s key arguments was that a reference to the CJEU was appropriate given that, if the appeal was allowed, a number of trade marks including those in other Member States were liable to be declared invalid.
The UKIPO and other trade mark offices previously issued guidance endorsing the use of ‘predominant’ as an acceptable reference to uses of colour trade marks on the visible surface of named objects, such as the packaging for goods. The word ‘predominant’ was not considered a reference to alternative marks; the Court of Appeal now says it is. Justice Lloyd stated in his judgment that ‘the use of this sort of formula may require reconsideration in given cases’.
The decision has potential implications outside the specific facts of this case:
- trade mark descriptions should not result in more than one permutation or application: the Court’s analysis of trade mark descriptions which result in more than one permutation or can be interpreted in a number of different ways is not limited to use of the word ‘predominantly’. References to ‘in combination with’, ‘in similar proportion’, ‘in substantially similar form’, etc are likely to create similar invalidity risks; and
- other non-traditional and series trade marks may be affected: the vulnerabilities identified by the Court may also apply to other types of marks such as devices or logos, shapes, scents, sounds or marks registered in series, all of which are often accompanied by specific descriptions to assist the examiner, competitors and the public to identify the attributes of the mark claimed by the applicant.
The decision also creates a tension with the current proposed amendments to European trade mark law which will remove the requirement for a trade mark to be represented graphically. Applicants for future non-traditional marks are likely to face difficulty in articulating the scope of their trade marks based on the restrictive approach to permitted descriptions suggested by the Court in this case.
In the meantime, brand owners should review their registrations closely and assess any vulnerabilities based on this decision with a view to reducing the risk of challenges on the grounds of invalidity. That assessment may include seeking alternative methods of protection including applying for more specific trade marks to fill any gaps in protection. Specific trade marks may include marks which claim colours in particular combinations with other colours or graphic elements (eg pack elements with brand names and variants removed), registrations for colours applied to entire visible surfaces with limited descriptions, or registrations accompanied by very precise descriptions.