Cadbury’s 2004 trade mark application for purple hue Pantone 2685C was rejected by the UK Court of Appeal in October 2013, following objections by Nestlé.
But Cadbury had an earlier 1995 trademark registered on the purple shade for chocolate bars and tablets and hoped to revise the wording to distance that registration from the 2013 Court of Appeal finding and maintain its validity.
However, a UK high court yesterday said the 1995 trademark could not be revised after Nestlé raised objections.
1995 trademark may be invalidated
A legal expert says the 1995 trademark will now likely be invalidated if Nestlé tries to contest it.
Lee Curtis, trade mark attorney and partner at IP Law HGF called yesterday’s decision “another blow to Cadbury in its attempt to monopolize a shade of purple for milk chocolate products”.
“Although based on a very technical point of trade mark law, the High Court has clearly opened up the possibility that Cadbury’s second trade mark registration for a trade mark which attempted to describe the application of the color purple to the packaging of milk chocolate products is invalid and thus not enforceable against Nestlé and others, based on an earlier decision of the Court of Appeal,” he said.
Mondelēz considers next steps
Mondelēz International spokesperson said the firm was “disappointed” by the latest decision.
"… But it’s important to point out that it does not affect our long held right to protect our distinctive color purple from others seeking to pass off their products as Cadbury chocolate.
“Our color 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 in due course.”
A Nestlé spokesperson told this site: “We supported the UK IPO’s view in this case and are pleased that the high court is in agreement”
Cadbury’s purple turf wars
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 Mondelēz) 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.
However, they refused to comment further on the case and would not specify if Nestlé would contest the validity of Cadbury’s 1995 trademark.
Waste of money or a competitive advantage?
The latest case comes after Cadbury’s successful legal action to prevent Nestlé registering the shape of a KitKat chocolate bar as a trade mark.
“Although many might see these legal battles as petty and a waste of money, they are important to the parties involved, as the winner gains a competitive advantage in the marketplace, or at least denies such an advantage to the other,” said Curtis.