• Share

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 handles a wide range of trade mark work in the UK and before the EUIPO. This includes prosecution of applications, opposition, revocation and invalidity proceedings. She is also experienced in advising on UK trade mark clearance searches, managing large and complex trade mark portfolios and devising international filing strategies. She is a member of the European Communities Trademark Association (ECTA) Harmonization Committee and regularly attends the ECTA Annual Conference. She is also part of the Chartered Institute of Trade Mark Attorneys (CITMA) Review Editorial Working Group, responsible for overseeing CITMA’s membership publication.
Comments

Sign up to Forward - news, insights and features

Our People

Our IP specialists work at all stage of the IP life cycle and provide strategic advice about patent, trade mark and registered designs, as well as any IP-related disputes and legal and commercial requirements.

OUR PEOPLE

Contact Us

We have an easily-accessible office in central London, as well as a number of regional offices throughout the UK and an office in Munich, Germany.  We’d love to hear from you, so please get in touch.