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Posted on 06 December 2018

Cadbury has been dealt a blow by the Court of Appeal in its battle to maintain its trade mark for the colour purple which it uses across all of its chocolate bars.

On 5 December 2018 the Court of Appeal confirmed the previous decisions of the UK Intellectual Property Office and the High Court, and refused to accept that Cadbury’s registration is for a series of two different marks.

The story so far

Cadbury have a UK trade mark registration for their colour purple which has the following description: 

 “The mark consists of 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.”

They subsequently filed another UK trade mark application for the same mark, which Nestlé opposed.  The opposition ultimately succeeded because the Court of Appeal felt that the description didn’t adequately define the mark.  This was primarily because the wording “being the predominant colour applied to the whole visible surface” is too broad.    

Cadbury presumably realised that this meant their existing UK registration was potentially invalidly registered, so they came up with quite a creative way to try and get round this.  They claimed that the existing UK registration was actually for a series of two different marks: 1) the colour purple (Pantone 2685C) applied to the whole visible surface of the packaging of the goods, and 2) the colour purple (Pantone 2685C) being the predominant colour applied to the whole visible surface of the packaging of the goods.  If this argument was accepted, it would allow them to delete the problematic second mark.

The Court of Appeal has previously held that the wording “The mark consists of the colour purple (Pantone 2685C)… being the predominant colour applied to the whole visible surface, of the packaging of the goods” potentially opens the door to a multitude of different visual forms.  Therefore, if the Court had accepted Cadbury’s argument that their UK registration is for a series of marks, Cadbury would arguably have a registration for a series containing an unknown number of different marks, consisting of the varying different forms.  Unsurprisingly, this is something that the Court of Appeal was keen to prevent.  

This decision, although seemingly about an administrative point, was a significant blow to Cadbury, as it meant the wording “being the predominant colour applied to the whole visible surface”, previously considered too broad by the Court of Appeal, had to remain in their registration. It seems that Cadbury realised this would make their registration extremely difficult, if not impossible, to enforce, as they appear to have voluntarily surrendered the registration at the end of January 2019.    

What next for Cadbury?

Cadbury still owns a separate UK trade mark registration for their specific shade of purple, covering “chocolate in bar or tablet form”. However, this includes the same description of the mark previously considered too broad by the Court of Appeal. Consequently, the registration is open to attack by Nestlé and other third parties for being invalidly registered. It will be interesting to see if Cadbury voluntarily surrenders this registration as well.

Cadbury could also try to rely on any unregistered trade mark rights or goodwill they may have acquired through use of their colour in the UK, but enforcing these rights would be more onerous than relying on a valid trade mark registration.  Their claim to a monopoly in their specific shade of purple therefore seems severely weakened at this point.

Read more

Rebecca’s comments on this case have featured in a number of publications including: The Telegraph, The MirrorThe SunThe Trademark Lawyer, World Trademark Review, IPPro Magazine, Marketing Industry News, Managing IP and The Drum.

 

Rebecca Anderson-Smith

Contact Rebecca Anderson-Smith

Rebecca is a member of our trade mark team dealing with a wide range of work in the UK and before the EUIPO, including prosecution of applications, opposition, revocation and invalidity proceedings. She is also authorised to act before the Irish Patents Office in relation to trade mark matters. Rebecca regularly advises on trade mark clearance searches and devises international filing strategies. She has experience working in various industry sectors, including consumer products, retail, pharmaceuticals, professional services, Medtech, electronics & electronic engineering, food & beverage and computer software.

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