The UK High Court dismissed Nestlé’s appeal to block Cadbury’s application to register the purple shade Pantone 2685C as a UK trademark, but ruled that the mark should cover only milk chocolate as the color lacked identity to Cadbury for dark, white and plain chocolate.
However, a lawyer working on behalf of Cadbury has warned that competitors could still violate the trademark by packaging any chocolate variety in the coveted purple shade.
2004 application
Cadbury filed its initial trademark application for the color in 2004, which read:
“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.
Intellectual Property Office hearing
Nestlé claimed that the color was indistinctive to the Cadbury brand and was similar to other colors commonly used by industry.
This lead to a hearing at the UK’s Intellectual Property Office, which ruled in November last year that the color was distinctive to the Cadbury brand and dismissed Nestlé’s claims.
However, the judge in that case altered the goods covered. The updated wording read:
“Chocolate in bar and tablet form; eating chocolate; drinking chocolate and preparations for making drinking chocolate,”
High Court appeal
Nestlé then took the case to the High Court, but its appeal was dismissed yesterday.
A Nestlé UK spokesperson told ConfectioneryNews.com that this was only a “partial victory” for Cadbury as the wording of the trademark today was very different to what Cadbury put forward in 2004. Today the wording reads:
“Milk Chocolate in bar and tablet form; Milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate”
However, Ian Wood, a partner at Charles Russell LPP, the law firm that represented Cadbury, told this site that “similar goods” using the color could still infringe the trademark if it caused confusion or was seen to deliberately dilute the trademark.
“The protection given by a registered trade mark extends not only to the goods for which it is registered but also, where there is a likelihood of confusion, to similar goods, “ he said.
“Thus, in appropriate circumstances, the protection given by the registration of the purple mark can extend to boxed chocolates, to white and dark chocolate and to other similar goods,” he continued.
Color counts
Nestlé was previously accused of undermining Cadbury’s Pantone 2685C trademark by packaging products with slight variants of the color, such as its Quality Street My Purple Bar. Nestlé has applied for its own trademark for this color.
In 2009, Cadbury ended a six-year legal battle out of court with Australian confectioner Darrell Lea for its use of purple packaging.
Kraft also owns a trademark for lilac for its Milka brand and has fought cases against alleged misuse by Stollwerck in Poland and against Chocolates Bariloche in Argentina.