A sweet victory for Cadbury

The High Court has confirmed that brand owners can obtain trade mark protection for a single colour even if the description does not refer to how the colour will be used.

This case confirms that a colour mark will be allowed if the description is sufficiently clear and precise; it highlights how Cadbury was able to meet this threshold.

The basics

To register a trade mark, the sign must meet a specified criteria. Two of these requirements are that the sign is represented in a manner which enables the public to determine the clear and precise subject matter of the protection afforded to the proprietor and that it can be used to distinguish the goods/services of different businesses. Using an internationally recognised colour identification code within the mark's description may help satisfy this.

The latest decision on the topic is a sequel to the Cadbury v Nestlé saga.

Cadbury has used the colour purple on its packaging for a variety of chocolate related goods for over 100 years. Like many brand owners trying to protect their use by a trade mark colour registration, Cadbury has encountered various longstanding battles with both the UK Intellectual Property Office (UK IPO) and third parties (such as Nestlé) to trade mark the colour purple.

UK IPO Decision

In the latest turn of events, the High Court allowed an appeal from a UK IPO decision partially upholding Nestlé's opposition to Cadbury's application to register Pantone 2685c as a trade mark in respect of milk chocolate and drinking chocolate.

Nestlé filed the initial UK opposition arguing that Cadbury's three trade mark applications did not satisfy the requirements of a 'sign'. The Hearing Officer's respective findings were as follows:

1. UK Application No. 3019362, with the mark described as: “The colour purple (Pantone 2685C) … applied to the whole visible surface of the packaging of the goods.” Opposition rejected and so the mark was able to proceed to registration.
2. UK Application No. 3019361, with the mark described as: “The colour purple (Pantone 2685C) … applied to the packaging of goods.” Opposition upheld and mark refused.
3. UK Application No. 3025822, with the mark described as: “The colour purple (Pantone 2685C), shown on the form of application.” This was a square containing a colour and a reference to the pantone. Opposition upheld and mark refused.

Cadbury appealed to the High Court in relation to marks two and three.

The High Court

Judge Richard Meade referred to the law previously relied upon and the findings in the parties' dispute in 2013 where the Court of Appeal largely rejected the colour purple because of the use of "predominant" in the description "the colour purple (Pantone 2685C) as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods". Essentially this was because the word "predominant" meant that the registration would open the door to the mark having a multitude of different forms and that it was for a colour 'plus' other material. The public would therefore not understand the scope of the rights.

Meade J stated the two questions at issue were whether:

1. The second mark, by not referring to the degree of application to the packaging, avoided the 'predominant' issue that afflicted the mark in the 2013 decision.
2. The third mark (i.e. in 'Libertel form' with the Pantone colour stated, but without reference to how it is used) was capable of being a sign, or did it also run into the problems found in the 2013 decision.

Meade J conceded that the Hearing Officer's reasoning that the representations did not explain how the colour is used as a sign for rejecting both applications was "inconsistent".

Ultimately, the appeal succeeded for the third mark but failed in relation to the second mark. The second mark was not specific and was of high ambiguity. The key difference was that the second mark's description was unclear as to whether the scope of the right covered a combination of colours, whereas the third mark did not suffer from this problem – it merely represented the colour purple. Meade J also remarked that his findings should not be interpreted to mean that it would be impossible to have a colour mark which "specifies unambiguously and in appropriate detail how a colour is applied to goods".

So, the two of the marks have now proceeded to registration namely:

• The first mark (https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003019362).

• The third mark (https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003025822).

This is a welcomed decision for brand owners who have built their reputation around a particular colour – single colour marks without contours can validly exist! It also emphasises how important it is for brand owners to liaise with IP specialists to ensure that their trade mark application (including any description) is sufficiently clear. After the application is submitted, the identity of the mark cannot be substantially amended.

Nevertheless, this decision only considers the requirements of what constitutes a sign - it does not assess whether a colour mark has enough distinctiveness to be registered. That is still an additional and very difficult (and expensive) criterion for protection that brand owners must overcome.

Bethany Wheeler-Fowler, Trainee Solicitor

 If you have any queries about colour trade marks, please let get in touch with the team below.

Case references:

• Nestle SA v Cadbury UK Ltd [2022] EWHC 1671 (Ch) (05 July 2022).

• Societe des Produits Nestlé SA v Cadbury UK Ltd [2022] EWHC 1671 (Ch).

• Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174.

• Libertel Groep BV v. Benelux-Merkenbureau (Case C-104/01) (“Libertel”).