Don't go purple with rage over Cadbury
The High Court recently rejected a challenge by Nestlé to Cadbury's application to register
its colour purple for chocolate.
It is established law that single colours can be registered as trademarks but what exactly
will other manufacturers be prevented from doing by this registration and what does it take
to 'own' a colour?
Cadbury applied to register their purple colour as a UK trademark in 2004 for goods
reading "chocolate in bar form, chocolate confectionery, chocolate assortments,
cocoa-based beverages, preparations for cocoa-based beverages, chocolate based
beverages, preparations for chocolate based beverages, chocolate cakes". The
application was rejected by the UK Trade Mark Registry as being "devoid of distinctive
character" - that is, incapable of serving the function of a trademark and identifying the
origin of the goods to which it was applied.
Cadbury filed evidence that the mark had “acquired distinctiveness through use”. This
showed that the mark had been used so extensively that consumers had come to
recognise it as identifying their goods alone. On this basis the mark was accepted.
However the application was opposed by Nestlé in an attempt to limit Cadbury's monopoly
as far as possible. Nestlé’s opposition was unsuccessful overall however they were able
to limit the mark to only the following goods: "chocolate in bar and tablet form; chocolate
for eating; drinking chocolate; preparations for making drinking chocolate".
Nestlé appealed the decision and claimed that the colour purple was not capable of being
represented graphically and therefore could not function as a trademark. When Cadbury
applied for the mark they provided an example of the colour and the description "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". Nestlé argued that this was not an application for a single
trademark but a whole series of trademarks for different arrangements of the colour purple
on packaging. The judge rejected the argument and found for Cadbury although the goods
were limited further to "milk chocolate in bar and tablet form; milk chocolate for eating;
drinking chocolate; preparations for making drinking chocolate".
This case shows that the UK Courts will limit a monopoly in a colour so it protects only the
genuine and proven interests of the applicant. Cadbury's protection is not for purple
generally but for the particular shade of purple it uses. Cadbury's trade mark will only be
infringed if a shade of purple so similar to the 'Cadbury' purple as to be indistinguishable is
used by someone else .Protection was rejected for many of the goods included in the
original application such as chocolate assortments and cakes although evidence was
produced of sales of those items in purple packaging over a significant period, showing
that the strength of the association between a trade mark owner and a colour must be
extremely high and the use of the colour in relation to particular products must be close to
exclusive. The evidence in this case showed that other manufacturers used 'a' purple for
cakes and chocolate assortments and Cadbury used other colours for its own chocolate
assortments. As a result protection will encompass only goods consisting solely of milk
chocolate or drinking chocolate.
What does this mean for other manufacturers? To stand a chance of securing a monopoly
for a colour trade mark a colour must be narrowly defined and the precise shade must
always be used; use of the colour by others must be prevented and good records of
packaging, marketing and advertising materials should be kept for as long as possible prior
to making the application.
Since Cadbury had almost a century of use of their purple to rely on, the case should
prove to be an exception rather than the rule and the majority of colours will remain
available for all to use.
Elizabeth Dunn, Trade Mark Attorney
First published in The Grocer, October 2012
Copyright 2010. The information in this document is necessarily of a general nature and is given by way of guidance only. Specific legal advice should be sought on any particular
matter. Dehns accepts no responsibility whatsoever for any action taken or not taken on the basis of the information contained herein. (Last updated October 2012 - EAD)