Cadbury finally hits a purple patch

Summary

The fight over use of the colour purple is, perhaps, one of the more hotly contested colour battles. It is not, however, restricted only to a couple of businesses in a single field (Glaxo and Sandoz fought over it in relation to inhalers). Nevertheless, in the minds of trade mark practitioners, it is more usually associated with Cadbury trying to obtain registrations, with Nestlé opposing (no doubt in retaliation for Cadbury doing the same (and successfully) in relation to the 3D mark for KIT KAT chocolate bars).

Seeking to dominate a specific single colour has been a contentious approach and few have successfully achieved this. This, however, is primarily because of the scope of the description in the trade mark application, not because such marks are unacceptable in terms of the case law: Libertel Groep BV v Benelux-Merkenbureau Case C-104/01 deciding it was possible subject to certain criteria being fulfilled.

Could Cadbury finally manage to draft a specification which would avoid the problems identified by the case law, and overcome the objections of others?

Société des Produits Nestlé v Cadbury UK Ltd (Comptroller-General of Patents intervening)  [2022] EWHC 1671 (Ch)

Case background

Following the handing down of a decision in the UKIPO over yet more applications by Cadbury, in which one application finally overcame opposition, Cadbury and Nestlé sought a truce and settled their purple mark differences. However, Cadbury still sought to appeal the decision by the hearing officer to reject the other two applications.

The goods for each mark were identical and were essentially milk chocolate and drinking chocolate in Class 30. The three marks in issue all had the same coloured square in the box for showing what the mark applied for looked like, but were distinguished by their individual descriptions. These were:

1. a) Application No 3 019 362: Mark description: The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods.

1. b) Application No 3 019 361: Mark description: The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods

1. c) Application No 3 025 822: Mark description: The colour purple (Pantone 2685C), shown on the form of application.

Mark ‘362 was the one the hearing officer considered acceptable in her decision. She upheld the oppositions for ‘361 and ‘822.

In considering the state of the law, the judge (Meade J) in addition to considering the Libertel decision, he also referred to the previous English court decision involving these parties and the colour purple, which ended up in the Court of Appeal ([2013] EWCA Civ 1174).

The judge had to consider whether the hearing officer was right to reject the ‘361 and ‘822 applications.

Decision

The judge noted that in Libertel the CJEU decided that “a colour per se, not spatially delimited, may … have a distinctive character … provided that….it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective.” The CJEU indicated this could be achieved by using an internationally recognised code such as Pantone or RAL.

The trade mark description objected to in the Court of Appeal was:

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.

It was rejected because the use of ‘predominant’ gave rise to a multitude of different visual forms as a result of the implied reference to other colours/visual material not disclosed in the application. It therefore lacked the necessary certainty and precision required following Libertel.

In upholding the hearing officer’s decision to reject the ‘361 mark, the judge considered the description made worse all the problems identified by the Court of Appeal in relation to the above wording, and so let in multiple forms.

For the ‘822 mark, he disagreed with the hearing officer’s decision. First, he described the ‘822 application as being in ‘the Libertel form’ and so a single thing conceptually. Its use was not restricted to packaging but could be on advertising, business documents or even the goods themselves. There was no ambiguity, and the use of the Pantone reference cured any uncertainty. The lack of contour argument raised by the hearing officer was inconsistent with Libertel. Accordingly, he rejected the opposition and the hearing officer’s decision.

Finally, the judge provided his views on “…whether another trader’s mark, which was a combination of colours including the relevant shade of purple, would be identical to the Marks.” (emphasis added). He stated:

It cannot be expected that the issue of whether two marks are identical will always be capable of an instant answer with no room for debate; proper characterisation of an alleged infringer’s “sign” is capable of argument, for example. But it can be hoped that the principles of law applicable to colour marks minimise unnecessary ambiguity, and do not limit traders’ freedom of action inappropriately.

Implication

Perhaps because of the way colour marks have been applied for, and the decisions that have ensued, the fundamental conclusion of the Libertel decision: that a single colour, shown in an abstract depiction in a square box, if specified by an internationally recognised colour scheme that is clear, precise etc., can be registered and function as a trade mark.

However, it needs to be borne in mind that this case considered only s1(1) [capable of clear and precise representation and distinguishing one undertakings goods for another’s] and s3(1)(a) [signs not complying with s1(1). It did not involve s3(1)(b) [mark devoid of distinctive character – all references to the Trade Marks Act 1994]. Nor does it answer whether the mark has acquired that distinctive character through use: that will be a matter of fact based on evidence provided by the trade mark applicant.

Insofar as the judge’s ‘identity’ comments are concerned, it is difficult to see how helpful these truly are. One can perhaps appreciate that ‘the principles of law’ would restrict colour marks suitably when considering whether the sign is identical or not. But to infringe, the sign need only be similar.

No doubt there are plenty of trade mark litigators rubbing their hands at the prospect of testing the scope of protection and infringement out.