Cadbury can register colour purple as trade mark

HHJ Birss QC, sitting as a judge in the High Court, has upheld a decision of a Trade Marks Registry Hearing Officer to allow registration of a trade mark comprising, in essence, a single colour: Société Des Produits Nestlé S.A. v Cadbury UK Ltd [2012] EWHC 2637 (Ch) . Back in 2004, Cadbury UK Ltd filed an application (number 2376879) of a trade mark comprising a block of colour and a verbal description:

The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, as being the predominant colour applied to the whole visible surface, of the packaging of the goods

The goods specified were in Class 30:

Chocolate in bar and tablet form, chocolate confectionery, chocolate assortments, cocoa-based beverages, preparations for cocoa-based beverages, chocolate-based beverages, preparations for chocolate-based beverages, chocolate cakes.

The Examiner rejected the application on the grounds that it was devoid of distinctive character: however, on production of evidence of use the application was accepted and published in the Trade Marks Journal on 30^th May 2008.

In August 2008 Société des Produits Nestlé opposed the Application in Opposition No. 97819 and on 20^th October 2011 the Hearing Officer, Mr. James, essentially found for Cadbury and allowed the application. Nestlé appealed, arguing that the subject-matter of the application was not a sign, and that it was not capable of graphical representation. Under Section 3(1)(a) of the Trade Marks Act 1994, Nestlé contended, it was not registrable.

In the latest judgment, HHJ Birss QC explained that to prevent unjustified monopolies, registration of trade marks should be ‘kept firmly in its proper sphere’, and then, reflecting on the visible electromagnetic spectrum, posed the question ‘can Cadbury, even if they have shown that the public associate the colour purple with Cadbury’s chocolate, obtain a trade mark registration for that colour per se?’ He considered four judgements of the Court of Justice, which the Court of Appeal also reviewed:

·         Libertel v Benelux, in which the Court of Justice considered whether a Dutch telecommunications company could register the colour orange for telecoms goods and services; court held that a colour alone, which is not bound by any shape or outline, is capable of being registered as a Trade mark, but to satisfy the conditions of Article 2 of the Trade Mark Directive (i.e. Section 1(1) of the Trade Marks Act), the colour must also be a sign capable of distinguishing the goods/services of one undertaking from another.

·         Sieckmann v Deutches Patent und Markenamt, the Court of Justice addressed whether the smell of cinnamon (ethyl cinnamate) could be registered as a mark. The court held that smell could be a sign under Article 2, but it must also be capable of being represented graphically - which despite the sample and chemical formula, did not satisfy that requirement.

·         Heidelberger Bauchemie in which, a combination of blue and yellow ‘in every conceivable form’ was considered

·         Dyson v Registrar of Trade marks where Dyson sought to register the transparent collection chamber of a vacuum cleaner as a trade mark. The Court of Justice in Dyson confirmed its decisions in Libertel and Heidelberger and held that because the mark was for ‘all conceivable shapes’ of a clear collecting bin, this did not satisfy the requirement that the graphical representation should be clear and precise.

Nestlé argued that the mark applied for fell foul of Dyson because it relied on human subjectivity and other indeterminate factors: how can you judge with certainty whether a colour is ‘predominant’? That wording allowed many alternative readings, and the description of the mark was inherently uncertain The colour could not be a sign and could potentially lead to abuse and anti-competitive effects. Moreover, the mark was for a colour combination but would fall foul of Heidelberger since it was not spatially delimited.

The judge disagreed with Nestlé’s arguments. He stated that a mark is capable of satisfying Article 2 provided it is defined properly in words and with a Pantone code, even though that colour can ‘obviously be used in an infinite variety of ways’. The law in Libertel and in Heidelberger was robust and clear. The judge held that Cadbury's registration, was capable of being a sign under Article 2, and on the evidence had acquired distinctiveness for chocolate. He did however narrow the specification of goods, by adding the word ‘milk’ in front of ‘chocolate’, which given that the Cadbury’s product is not chocolate because it does not contain 25 per cent cocoa solids, but can be called ‘milk chocolate’ in the UK (and IE) by special dispensation under Directive 2000/36/EC (Annex 1 para A sub-para (4)(d)) seems entirely right.