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Nestle v Cadbury: The colour purple

Trade mark practitioners will be familiar with the high barriers in place governing the registrability of colours per se as trade marks, and for good policy reasons. Colours rarely evolve beyond a property of goods or a decorative purpose. 

Despite colours being specifically contemplated in the definition of a trade mark, the ability of colours to communicate origin is limited. Here Adrian Dykes discusses these issues brought to the forefront of the Nestle v Cadbury decision.

Cadbury UK Ltd v Société des Produits Nestlé SA (Comptroller-General of Patents, Designs and Trade Marks intervening) [2022] EWHC 1671 (Ch)

What are the practical implications of this case?

The construction of a trade mark description links directly to the requirement for graphical representation. Any ambiguity or the use of terms which could lead to a multitude of forms will mean the mark is incapable of graphical representation and not a ‘sign’. Practitioners should limit a description to a Pantone (or equivalent) reference and example block image. If a more detailed description is warranted in a particular case, practitioners should avoid language which opens the door to multiple forms of the mark, for example, by impliedly referring to other colours or visual material, as this will prevent registration.

What was the background?

Cadbury applied for three UK trade marks in class 30 for, broadly, milk chocolate and drinking chocolate. Each application was for the colour purple, specified by Pantone number and reference to a block image, and with reference to a description:

  • mark 1 described the colour ‘applied to the whole visible surface of the packaging of the goods’
  • mark 2 described the colour ‘applied to the packaging of the goods’
  • mark 3 had no reference to the packaging of the goods in the description

Nestlé opposed each application pursuant to TMA 1994, s 3(1)(a) on the basis that the marks did not fulfil the requirements of a ‘sign’. Before the Registrar, the opposition failed in respect of mark 1, but succeeded in respect of marks 2 and 3. Cadbury appealed to the High Court. Nestlé and Cadbury settled their long-running dispute before this appeal was heard, so dropped out of the proceedings. In view of the uncertainty and general importance of the law relating to the registration of colours as trade marks, the Comptroller-General intervened. The court had to decide a relatively narrow issue of pure law, namely how TMA 1994, s 3(1)(a) applied to differently formulated trade mark descriptions. The court did not have to consider the issue of distinctiveness (or acquired distinctiveness).

What did the court decide?

The court applied two key authorities dealing with the registrability of colour marks. In Libertel Groep BV v Beneleux-Merkenbureau, the Court of Justice held that a colour, not spatially defined, is capable of being registered as a trade mark, provided it is (i) a sign; (ii) capable of graphical representation; and (iii) capable of distinguishing goods or services. On (ii), a sign could be represented graphically if it was clear, precise, objective, durable, self-contained, easily assessable and intelligible (Seickmann v Deutsche Patent-und-Markenamnt).

These cases were applied by the Court of Appeal in Nestlé v Cadbury, where a trade mark description, also related to an application for the colour purple was considered. In that case, the description read ‘…applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods’. That mark was refused registration because the word ‘predominant’ used in the description opened the door to a multitude of different visual forms meaning that the mark could not be represented graphically and was ambiguous.

In this case, the court had to decide whether the wording of the descriptions in marks 2 and 3 could cure that deficiency. The Hearing Officer had held that they could not—mark 2 merely referred to applying the colour to the packaging of the goods without any limitation. This would lead to a multitude of forms, including situations where other colours were present and in different proportions. The description led to the situation which the Court of Appeal had rejected in the earlier Nestlé case. The court agreed, mark 2 was ambiguous and not capable of graphical representation.

The Hearing Officer concluded that the position was the same for mark 3, because the description did not explain how the mark was used as a sign, ie in packaging, advertising or as applied to the goods, and this would also lead to a multitude of forms. The court, however, disagreed. Mark 3 comprised a colour per se, ie the form contemplated in Libertel, ‘not spatially defined’. This is a single thing conceptually and could not lead to ambiguity or a multitude of forms as terms like ‘predominantly’ were not relevant. The court did not consider it relevant that the use was not specified in the description because a sign does not differ when the use takes place in a different context. The Hearing Officer’s decision was therefore inconsistent between marks 2 and 3, and not consistent with Libertel as it would preclude the registration of most colours per se unless accompanied by a specified manner of use. The appeal therefore succeed in relation to mark 3.

In summary, examiners need to ensure that potentially permanent monopolies awarded over colours are justified and third parties must be able to delineate the scope of protection afforded to a colour registration. One such barrier is how an applicant represents graphically a colour per se as a trade mark. Pantone (or equivalent) references are commonly used, but applicants have sought further to define their monopoly by reference to a verbal description. This case provides some guidance on how trade mark applicants can use a description to ensure the mark complies with the law on graphical representation and meets the definition of a “sign” under Section 3(1)(a) of the Trade Marks Act.

This article was first published on LexisNexis.