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1 July 2014
Further to our earlier comment on Cadbury’s failed attempt to register as a trade mark its well-known colour purple, the UK Supreme Court has refused its request to appeal the decision. Unfortunately for Cadbury, the Court of Appeal found favour with Nestlé’s contention that its application was incapable of registration.
To recap, Cadbury filed a UK trade mark application for the colour purple (Pantone 2685C) in 2004. The application was initially accepted by the UK IPO but, when advertised, it was opposed by Nestlé. Nestlé argued that the colour claimed in the application was not distinctive to Cadbury.
At first instance, the UK IPO dismissed Nestlé’s opposition. However, despite Cadbury convincing the High Court that the purple shade had acquired distinctiveness, the Court of Appeal found that the mark did not comply with the requirements for trade mark registration, since the description of the trade mark offered by Cadbury was imprecise. Cadbury’s description was said to claim protection for multiple signs, rather than one, namely “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”. On this basis, the mark applied for was not a “sign” capable of being protected as a registered trade mark.
In denying Cadbury’s application to lodge an appeal, the UK Supreme Court was of the opinion that there were no contentious points of law that required further consideration and that the settled case law was clear on this point. This finding ensured that Cadbury would not obtain registration for its colour purple.
This marks the end of the road for Cadbury in this instance and exemplifies the difficulties that brand owners face in attempting to gain registered protection for colour marks.
However, Cadbury may seek to file new trade mark applications for their colour with definitions that contain greater levels of precision. Should they be able to do so, the previous failings that were illuminated by the Court of Appeal may be overcome.
Of course, none of above diminishes the unregistered rights that Cadbury may have acquired in its colour purple. It will be interesting to see whether Cadbury attempts to rely on the common law action of passing off to prevent its competitors from using its shade of purple on packaging for milk chocolate products.
Trade Mark Group
If you require further information on anything covered in this briefing, please contact Mark Caddle (email@example.com; +44 207 940 3600) or your usual contact at the firm.
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, July 2014