Thu 12 Jan 2023

Cadbury's successful trade mark protection for specific colours: What does this mean for brands?

We all associate Cadbury with its iconic purple packaging – however, is the specific shade of purple used on Cadbury’s packaging iconic enough to warrant trade mark protection?

There has been a longstanding history of Cadbury and Nestlé challenging the rights of the other in relation to the registration of certain trade marks in the UK. Cadbury submitted an application to register the specific shade of purple used on its well-known milk chocolate bar packaging – Pantone 2685C – and this trade mark application was opposed by Nestlé, its rival in the chocolate manufacturing world.

This opposition reached the High Court in 2012, ruling in favour of Cadbury. The Court of Appeal, however, successfully overturned that decision in 2013 on the basis of the wording used by Cadbury in its trade mark application. The trade mark application detailed that Pantone 2685C would be used on “the whole visible surface” or be “the predominant colour applied to the whole visible surface” of the chocolate bar packaging.

The Court of Appeal found that use of the word “predominant” was too vague and therefore the trade mark application submitted by Cadbury lacked clarity, precision, self-containment, durability and objectivity to qualify for registration as a ‘sign’ under the Trade Marks Act 1994.

Cadbury proceeded to file three separate trade mark applications with the UK IPO in relation to its protection of the use of Pantone 2685C in class 30 with each of the applications outlining a different description of the mark. Nestlé, unsurprisingly, opposed to all three trade mark applications on the grounds outlined by the Court of Appeal ruling, that the trade marks did not qualify for registration as a ‘sign’ under the Trade Marks Act 1994.

In 2019, the UKIPO granted Cadbury its application describing the mark as “the colour purple (Pantone 2685C) as shown on the form of application, applied to the whole visible surface of the packaging of the goods”, but sought to decide in favour of Nestlé in relation to the two remaining opposed trade mark applications, both of which described the mark in vague and unspecific terms in relation to its application to the packaging.

Cadbury took the decision to raise an appeal in relation to the two trade mark applications rejected by the UKIPO, however, settlement was reached with Nestlé in respect of Cadbury’s use of the colour purple (Pantone 2685C) in its packaging ahead of the appeal being heard.

The Court decided to proceed with Cadbury’s appeal despite settlement being reached with Nestlé.

Mr Justice Meade accepted Cadbury’s appeal in relation to the trade mark application, describing the mark as “the colour purple (Pantone 2685C), shown on the form of application”, challenging the UKIPO hearing officer’s view that the manner of use of the mark, for example, on packaging, advertising or the goods themselves, had not been specified. Mr Justice Meade outlined that the application does not require to specify how or where the mark would be used on the basis that use of the colour was use of the ‘sign’, regardless of the manner in which it is used, and that ‘sign’ is not different from one context to another. The Court outlined that a mark registered for that same colour was valid when described simply as just the colour without the unclear and ambiguous reference to packaging of the goods.

Mr Justice Meade further stated that although “predominant” (being the word of influence in the 2013 ruling) provided dubiety around the mark itself that was seeking to be protected, outlining a single colour does not provide this same dubiety.

Mr Justice Meade’s ruling in the High Court provides some welcome clarity as to the requirements that need to be met in order to successfully register a colour as a trade mark. The primary take-aways for those seeking to register a colour as a trade mark is the importance of the combination of:

  1. providing a Pantone, RAL or other recognised colour reference in the trade mark application; and
  2. providing clear and unambiguous specificity by stating how the colour is applied to the goods in relation to which trade mark protection is sought (even if any such description applies to the whole visible surface of a product).

Being granted trade mark protection of a colour mark will remain challenging as applicants seeking to register a colour as a trade mark will still be required to meet the ‘acquired distinctiveness test’ in the mind of the consumer, which Cadbury was able to do as a result of its use of Pantone 2685C as a brand for over a century. Nonetheless, brands which rely heavily on colour in relation to brand identity will welcome this ruling.

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