Cadbury’s purple battle continues…Posted on
We have previously reported a decision by the High Court and the UK Intellectual Property Office (UK IPO) which accepted a UK trade mark application by Cadbury 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/). This article focuses on subsequent challenges of that registration by Nestlé.
As can be seen from the below commentary, securing a trade mark registration for a colour is far from easy but the potential competitive advantage could be huge hence the reason this matter is so important to Cadbury. If you have any colour questions about a product or packaging, please contact your trade mark attorney who would be delighted to comment on the merits of your case.
Cadbury had filed their application for a trade mark comprising of the colour purple with the descriptor that the mark was to be “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”. The application was filed for a range of chocolate–based goods in Class 30.
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 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.
The Court of Appeal upheld Nestlé’s appeal, rejecting Cadburys’ 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”.
A Cadbury‘s spokesperson has, unsurprisingly, expressed disappointment at the decision and has hinted that they may consider filing an Appeal and so, this may not be the last we hear of this matter.
So, in the war of the chocolate companies, the score is now one, one. Following Cadbury’s previous successful blocking of a UK trade mark application by Nestlé for the shape of their KIT KAT four fingered chocolate bar, it appears that for now, Nestlé have evened the score.