This means that Cadbury cannot register its trademark for purple shade Pantone 2685C, which it uses on Cadbury Dairy Milk. However, Cadbury’s lawyers have warned that this does not give competitors a license to use Cadbury’s purple to package milk chocolate.
The Court of Appeal ruling overturns earlier decisions in Cadbury’s favour in the High Court and UK Intellectual Property Office.
Giving his judgment in the Court of Appeal, Sir John Mummery, said:“To allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. 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.”
The other two judges in the case both agreed with Mummery, leaving no dissenting judgements.
Cadbury may appeal
A Cadbury spokesman said: “We are disappointed by this latest decision but it’s important to point out that it does not affect our long held right to protect our distinctive colour purple from others seeking to pass off their products as Cadbury chocolate.
“Our colour purple has been linked with Cadbury for a century and the British public has grown up understanding its link with our chocolate. We are studying this particular ruling and will consider our next steps which include the possibility of an appeal.”
Cadbury still protected against knock-offs, say lawyers
Mary Bagnall, a partner at Charles Russell LLP, the law firm representing Cadbury, told this site that the Court of Appeal case was about the wording of the trademark and said it was never in question in this appeal that Cadbury was distinctive for the purple hue on milk chocolate packaging.
She said that Cadbury could still stop competitors using its purple under the common law principle of “passing off”.
She that a proposed revised European Trademark Directive, which would bind all EU member states if enacted, confirms that single colors may be trademarked.
‘Right outcome,’ says Nestlé
Nestlé said in an emailed statement to ConfectioneryNews: “We welcome the Court of Appeal’s decision to uphold Nestlé’s objection against Mondelez’s proposal to trade mark its Dairy Milk ‘Purple’ colour across a broad range of products. We believe this was the right outcome from a legal perspective.”
Cadbury and Nestlé’s purple patch
Cadbury and Nestlé’s purple spat dates back almost 10 years. Along the way Cadbury has won all legal wars, but lost small battles along the way that has thinned the goods covered by its purple trademark.
Cadbury filed a UK trademark application for the purple shade Pantone 2685C in 2004 to cover the following goods:
“Chocolate in bar and tablet form; chocolate confectionery, chocolate assortments, cocoa-based beverages, preparations for cocoa-based beverages, chocolate-based beverages, preparations for chocolate-based beverages, chocolate cakes”.
The application was allowed and published in the Trade Marks Journal in 2008, but because it was opposed by Nestlé it could not be registered.
Color matters
Cadbury ended a six-year legal battle over Australian confectioner Darrell Lea’s use of purple packaging in 2009 with an out-of-court settlement. Cadbury’s parent Kraft (now Mondelez) also holds a trademark for lilac for its Milka brand and has fought cases against alleged misuse by Stollwerck in Poland and Chocolates Bariloche in Argentina.
UK Intellectual Property Office hearing
A UK’s Intellectual Property Office hearing in 2011 dismissed Nestlé claims that the color was not distinctive to Cadbury, but altered the goods covered to:
“Chocolate in bar and tablet form; eating chocolate; drinking chocolate and preparations for making drinking chocolate,”
High Court decision
Nestlé then took the case to the UK High Court, but that too was dismissed. However, Cadbury’s trademark was again diluted to cover only milk chocolate as the color lacked identity to Cadbury for dark, white and plain chocolate.
Nestlé subsequently took the case to the Court of Appeal, which today ruled in its favor.