50 Shades of Purple… but only one for Cadbury

The Supreme Court has refused Cadbury’s application to appeal against the Court of Appeal decision in Nestle SA v Cadbury UK Ltd. In the case, it was held that Cadbury’s trade mark application, regarding its distinctive colour purple, could not be a validly registered mark.

The Court of Appeal considered that a trade mark must be (1) “a sign”, and (2) “graphically represented”. However, on the basis of Cadbury’s verbal description, it did not meet the required criteria of constituting a sign:-

 “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 goods.”

The wording “or… predominant” was thought to be vague and is capable of constituting a large number of alternative signs and designs without any certainty as to what the mark actually is. It was considered to be an application for a shade of colour together with secondary characteristics, rather than just a solid colour. Overall, the court stated that the mark lacked “the required clarity, precision, self-containment, durability and objectivity” required for registration.

Cadbury

Given that the Intellectual Property Office originally accepted the application, Cadbury may wish to make a further trademark application for Pantone 2685C. The judgment of the Court of Appeal highlighted some points which Cadbury (and other potential colour trade mark owners) should consider the following:

The application to register a trade mark must be:

  •    a sign;
  •    capable of graphical representation; and
  •    capable of distinguishing between different goods or services.
  •   In order to be identifiable, a mark must be clear, intelligible, specific, precise, accessible, uniform, self-contained and objective.
  •  A single mark cannot take on multiple forms so as to cause confusion as to what exactly is being registered.
  •  A colour alone is not capable of being a sign; the colour must convey a message as to the source or origin of the goods or services. In such a case, colours without a defined figure or shape would be capable of registration when applied to a product or service.
  • A mark with multiple combined colours must be strictly uniform in its graphical representation, for example Burberry tartan (mark UK2300419).

The purpose of these rules is to prevent any unfair competitive advantages through the abuse of trade mark law.

The difficulties in securing the more unusual trade marks, as demonstrated by this case, may deter potential applications. If the potential owner can establish a reputation in the colour (as Cadbury had been able to do by showing the goodwill built up in their use of the purple since 1914) they can still rely on passing-off rights. Given the additional complexities in enforcing rights in unregistered marks, it is to be hoped that this area of the law develops further in the near future to ensure much needed clarity for applicants.

Ellis Walls
Trainee Solicitor – Business Services

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