Cadbury has owned a narrow UK trademark registration No. 2020876a for its purple colour (officially Pantone 2685C) since 1995 covering ‘Chocolate in bar or tablet form’. The colour is ‘applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods’.
More recently, its application No. 2376879 in 2004 to broaden cover to include chocolate confectionery, chocolate assortments, chocolate and cocoa-based beverages, preparations for making these, and chocolate cakes had been allowed by the UK registry. That was on the basis of evidence showing that distinctiveness that had been acquired through extensive use. This evidence included samples of packaging and details of use and advertising going back to 1914, as well as consumer and expert survey evidence.
Evidence not compelling enough
Nestlé opposed this application, but the experienced hearing officer allowed it to proceed subject to some goods restriction for which he felt the evidence not compelling enough. The mark was allowed for “Chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate.”
Nestlé appealed. In the High Court the argument was run on more esoteric lines. It was conceded that the colour itself was distinctive but Nestlé argued on the letter of the law that the mark was “not a sign capable of being represented graphically”.
Defining a mark graphically so that third parties can readily establish precisely what rights are owned is an essential element of trademark law. Nestlé referred to a number of decisions of the Court of Justice of the EU where this issue had been discussed.
But the leading decision still clearly suggested that a colour mark, in the terms defined, was capable of being registered, depending on the context in which it was used. Cadbury’s definition and nature of use was considered acceptable and the appeal dismissed.
Over-generous
On a subsidiary point, the judge did find that the list of goods was still over-generous having regard to the evidence submitted. This was limited further to “Milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate.”
Lest this might seem to the uninformed that Cadbury will now be able to stop anyone using any purple colour to sell anything, it should be stressed that all it has achieved is a right to prevent others using a particular shade of purple (or a shade indistinguishable from it) to package a relatively limited range of chocolate goods.
If this enables it to take swifter action against flagrant lookalikes without having to go to the time and expense of bringing passing-off actions, then the law will have done its job.
It also reinforces the view that obtaining registration of such single-colour marks does require a high-level of public recognition and it is unlikely that the flood gates will open.