Thursday, 7th November, 2013

'Predominant' in purple

On 4 October 2013, the United Kingdom Court of Appeal upheld Société des Produits Nestlé's appeal against Cadbury UK Ltd's attempt to register the colour purple as a trade mark. Gillian Nelson and Damian Broadley explain the decision and compare it to a similar case in New Zealand, which highlights the importance of the description in a colour application.

The colour purple in the United Kingdom

Société des Produits Nestlé S.A. v. Cadbury UK Ltd, [2013] EWCA (Civ) 1174 (October 04, 2013)

On 4 October 2013, the United Kingdom Court of Appeal upheld Société des Produits Nestlé's (Nestlé) appeal against Cadbury UK Ltd's (Cadbury) attempt to register the colour purple.

Cadbury applied to register the colour purple on 15 October 2004 (trade mark application number 2376879). The application included the following description of the trade mark:

'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.'

Cadbury's long-standing use of the colour purple was not debated. The court noted that the colour purple is distinctive of Cadbury in the United Kingdom when used on chocolate products, but what needed to be considered was whether Cadbury's application included a 'sign' that was registrable as a trade mark under article two of the Trademarks Directive.

After failing before the High Court of Justice in 2012, Nestlé appealed to the Court of Appeal on the basis 'that the colour mark described in the application was not registrable because it was not "a sign" and was not capable of being represented graphically'.

In considering whether the colour purple as applied for constituted a 'sign', the court focused on the meaning, application and logical implications of the word 'predominant' in the description of the trade mark. The court concluded:

'The description of the mark as including not just the colour purple as a sign, but other signs, in which the colour purple predominates over other colours and other matter, means that the mark described is not a "sign". There is wrapped up in the verbal description of the mark an unknown number of signs… The mark applied for thus lacks the required clarity, precision, self-containment, durability and objectivity to qualify for registration.'

While the decision does not preclude the possibility that colour applications can be accepted or that abstract colours can be 'signs', it does focus on the description of the trade mark. The decision emphasises that a clear, precise and accurate description must be present even if the colour has become distinctive as the result of the use made of the colour. The word 'predominant' is too subjective and imprecise to allow Cadbury's application for the colour purple to be capable of registration.

The colour purple in New Zealand

J.H. Whittaker & Sons Ltd v Cadbury Limited (November 2004)

This decision is in many ways the antithesis of a similar decision in New Zealand in 2004 relating to Cadbury Ltd's New Zealand trade mark application 312997. In that case, J H Whittaker & Sons Ltd opposed Cadbury Ltd's application on a number of grounds, including that the colour mark is not a trade mark.

Prior to the hearing Cadbury Ltd had applied to amend the description of the trade mark for clarity. The amended description read:

'The mark consists of the colour purple, as shown in the representation attached to the application, applied by any process, as the predominant colour to the wrapping, packaging or promotional material used on or in association with the goods.'

The Assistant Commissioner upheld Cadbury Ltd's application providing that Pantone 2685C was added to the trade mark description.

The Assistant Commissioner mused that it might be necessary to replace the word 'predominant' with 'substantial', or to further clarify the scope of 'predominant' in the description. In her decision, she found 'that "predominant" also fairly reflects the applicant's use of the colour purple on its packaging… and should be included in the explanation'.

Two very different decisions for two similar situations

The United Kingdom Court of Appeal's decision does not directly change the inherent registrability of colours as trade marks in New Zealand. And it doesn't mean you can start using Pantone 2574C on your own chocolate products-Cadbury Ltd still owns valid registrations in New Zealand. But it does highlight the importance of the description in a colour application.

Make sure the description succinctly, clearly and accurately describes the colour of your trade mark, and how it is used.