London Socie te des Produits Nestle SA v. Cadbury UK Limited  EWHC 2637
In another recent high profile decision in relation to colour trade marks, the English High Court has rejected an appeal from Nestle against the UK Intellectual Property Office (‘‘UKIPO’’) ruling that Cadbury’s trade mark application for a specific shade of purple proceed to registration.
While some further restrictions were placed on the scope of the protection granted, overall the judgment was a decisive victory for Cadbury. The decision follows the settled EU law position that a single colour is capable of being a trade mark and that it would be the context of use which determines the issue on a case-bycase basis. Despite the issue coming back before the Court of Justice of the European Union on a number of occasions, the court has resolutely refused to impose a per se rule against the registration of colours. This mirrors the recent decision of the US courts in the Louboutin case, where on appeal the imposition of ageneral rule denying protection for colours in the fashion industry was soundly rejected (see ‘‘US Appeal Court Rules Louboutin Mark Valid, But Has Only Limited Protection’’ [26 WIPR 21, 10/1/12]).
Cadbury initially applied in October 2004 to register:
‘‘The colour purple (Pantone 2685C) — applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods’’.
‘‘Class 30 — Chocolate in bar and tablet form, chocolate confectionary, chocolate assortments, cocoa-based beverages, preparations for cocoa-based beverages, chocolate-based beverages, preparations for chocolate-based beverages, chocolate cakes.’’
The UKIPO raised objections to the application on grounds of distinctiveness. However, Cadbury filed further evidence of its use of the mark which was sufficient to satisfy the UKIPO that the mark applied for had acquired distinctiveness. Once the mark proceeded to publication, Nestle became involved, filing an opposition in May 2008. The UKIPO rejected the Nestle opposition in October 2011, the appeal of which brought the matter before the High Court.
High Court Judgment
Section 1(1) of the Trade Marks Act 1994 provides that any sign capable of being represented graphically which is capable of distinguishing the goods of one undertaking from those of another undertaking can be a trade mark. This also reflects the legislative criteria for trade mark protection in the European Union.
On consideration the UKIPO allowed the registration but limited the specification to ‘‘chocolate in bar and tablet form; chocolate for eating; drinking chocolate; and preparations for making drinking chocolate’’ where it considered Cadbury had demonstrated a sufficient level of association by the public.
Nestle did not challenge the examiner’s findings in relation to distinctiveness for the various goods above (although it did seek to limit the specification). The main basis of its appeal was that the mark applied for by Cadbury was not a sign nor was it capable of being represented graphically and, therefore, does not meet the conditions for a valid trade mark. The High Court emphasised that the starting point for colour trade marks was the European Court of Justice’s decision in Libertel Groep BV v. Benelux-Merkenbureau (Case C-104/01). In Libertel, the ECJ had stated that while ‘‘normally a colour is a simple property of things’’, depending on the context of use it may constitute a sign. In so finding, the court rejected the opinion of the Advocate General, who had considered that economic operators should not be given exclusivity to use a colour itself with no shape or outline (see ‘‘Colors Are Registrable as Trademarks, European Court of Justice Decides’’ [17 WIPR 6, 7/1/03]).
However, the consideration of the context of use must still conform to the general criteria for graphic representation that the description of the mark be clear, precise, self contained, easily accessible and objective.1 In Dyson v. Registrar of Trade Marks (Case C-321/03), the Court of Justice found that Dyson’s application for a transparent bin or collection chamber of a vacuum cleaner did not satisfy this requirement as it was not sufficiently specific and could take on a multitude of different appearances. Therefore, this was not a sign, but a property of the product.
Nestle argued that Cadbury’s mark fell foul of the decision in Dyson as its mark could constitute an infinite or indeterminate number of signs being the application to ‘‘the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods’’. Nestle’s position was that this wording had too high a level of subjectivity, presented alternative uses and in reality meant that Cadbury’s mark would be for a combination of colours rather than simply purple.
The combination of colours argument had been considered and dismissed by the UKIPO on the basis that any other colour being used would not form a part of the sign and, therefore, no issue arose. The English High Court agreed with the UKIPO’s conclusion. With regard to the subjectivity of ‘‘predominant’’, the court held that while this did require a decision maker to make a judgment, it was not fatal to the mark and that to find otherwise would undermine the ECJ in Libertel. Equally, on the ‘‘alternative uses’’ argument, the court accepted Cadbury’s submission that the application to the whole visible surface of the packaging was simply an extreme of the colour being the predominant colour of the packaging and not really an alternative.
Although Nestle’s arguments with regard to the validity of the mark were soundly rejected by the court, it did have some success in limiting the protection granted to Cadbury.
Nestle had challenged the wording of the registration, stating that ‘‘chocolate for eating’’ was too vague and uncertain and an impermissible extension of the mark that had originally been applied for. The court rejected this submission taking the view that all consumers are familiar with what ‘‘chocolate for eating’’ means and agreeing with Cadbury that given the original application included chocolate confectionary, this did not represent an extension but was a refinement of the initial specification.
However, the court did accept that ‘‘chocolate’’ should be limited to ‘‘milk chocolate’’. The court agreed that Cadbury’s use of purple has been in relation to milk chocolate and it had not produced specific evidence that there was consumer recognition of its products using white chocolate or plain/dark chocolate.
When giving his decision, HH Judge Birss QC acknowledged the tension between conventional trade marks, such as trade names and logos and the more exotic trade marks, like smells and colours per se, which all exist within the same legislative framework. This had to be considered in the context of the difference between trade marks and other intellectual property rights in that the extent of the monopoly allowed is far wider; a trade mark can live forever provided it is renewed every 10 years.
Therefore, while in theory colours are capable of constituting trade marks, there is still reticence with regard to colours being unduly carved up between companies. This is also a reflection on the dichotomy between intellectual property rights being inherently monopolistic and one of the central purposes of the European Union, which is to promote competition and a free market within the EU.
As things stand, the CJEU’s position appears relatively entrenched, although should this case continue a reference may ultimately be made by the UK courts. The national registries and the Office for Harmonization in the Internal Market (OHIM) continue to carefully police such applications and in practice any applicant for a colour trade mark will have to show a high level of consumer recognition for the mark to proceed to registration. It is notable that Cadbury’s registration was only for a UK trade mark rather than a CTM, where Cadbury would have needed to show a sufficient level of recognition in all EU Member States — a high hurdle indeed.
Many media reports of this decision have suggested that Cadbury now owns the colour purple. This is a misnomer — although such reports may result in other companies simply staying away from purple altogether — not an undesirable outcome for Cadbury.
Given the potential impact of colours being ring-fenced as trade marks, the likelihood is that even if the validity of such marks is upheld, the courts would take a narrow approach when assessing infringement. For example, it is anticipated that to be identical, the colour used by the alleged infringer will need to be exactly that — the exact pantone. Further, the courts may not interpret similar as meaning all shades of purple but may limit this to shades that are close in the spectrum to the specific pantone, this could result in Cadbury being unable to prevent the use of light purples, such as lilac and mauve as they would be considered sufficiently different to be dissimilar.
1 Sieckmann v. Deutsches Patent und Markenamt (Case C-273/00).