Cadbury colour bar indefensible?

Cadbury has lost its five year battle to register a distinctive shade of purple (Pantone 2685C) as a trade mark for its milk chocolate bars. Cadbury’s argument that registering a specific colour would not give them unfair competitive advantage was rejected by the Court of Appeal, which ruled in Société Des Produits Nestlé S.A. v Cadbury UK Ltd [2013] EWCA Civ 1174 (04 October 2013) that Cadbury’s formulation does not comply with the requirements for trade mark registration, lacking ‘the required clarity, precision, self-containment, durability and objectivity to qualify for registration’. Specifically, the definition of the ‘predominant colour’ of its packaging fell short of ‘necessary precision’ as demonstrated by the attempt to register ‘multiple signs’ using the purple shade in a variety of permutations rather than as a consistent single block of colour. Sir John Mummery added that a colour trade mark would give Cadbury a ‘competitive advantage’ and place its competitors at a disadvantage.

Cadbury, trying perhaps to salvage something from the exercise, says the right to protect the colour from those seeking to pass off their products as Cadbury chocolate remains unaffected. Nor does the judgment make colour trade marks in general unregistrable: Cadbury could have succeeded with a slightly different application, although the commercial value of doing so might explain why they went the way they did.

The application (number 2376879) dates back to 2004. The Examiner rejected it as devoid of distinctive character: however, on production of evidence application was accepted and published in Trade Marks Journal on 30^th May 2008. The mark applied for was the block purple rectangle and the description read:

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. [Emphasis added: we will come back to those words later.]

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.

Nestlé opposed, and the Hearing Officer rejected their claims which were based on arguments that what was applied for was not even a sign, let alone a trade mark, and that it could not be represented graphically. On appeal to the High Court (see our note here) Judge Birss QC upheld the Hearing Officer, and Nestlé appealed to the Court of Appeal. Nestlé also submitted that, if the issues on the interpretation of the Directive were not acte clair in Nestlé's favour, there should be a reference to the Court of Justice under art 267.

At paragraphs [20] and [21] of his judgment, Judge Birss QC had referred to the classic dictum of Cozens-Hardy MR which explains so pithily why trade marks must be kept in their box:

Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure.

(Joseph Crosfield & Son's Appn ("Perfection") (1909) 26 RPC 837 at page 854.)

In the Court of Appeal Sir John Mummery endorsed the judge’s observations about the problems with exotic marks at paragraph [13]:

The judge recognised that unconventional or ‘exotic’ marks, such as colours, sounds and smells, give rise to conceptual problems, which are not encountered with more conventional trade names and logos. As the registration of a trade mark creates a form of intellectual property conferring a potentially perpetual monopoly in the mark and excluding everybody else from use in various ways, the point of principle has some public importance.

Sir John reviewed the case law which had also been gone over by the Hearing Officer and the judge: Libertel,  Case C-273/00 Sieckmann v. Deutsche Patent –und Markenamnt [2002] ECR 1-11754, Case C-49/02 Heidelberger Bauchemie GmbH v. Bundespatentgerich  ECR 1-6129 and  C-321/03 Dyson v. Registrar of Trade Marks ECR 1-687. He distilled the series of principles from them, set out at paragraph [15] of his judgment, which is worth repeating here:

"The conditions

(1) An application to register a trade mark must satisfy three conditions for the purposes of Article 2:-

(i) there must be a sign;
(ii) it must be capable of graphical representation;
(iii) it must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.

Purpose

2) The purpose of the requirements is to prevent abuse of trade mark law in order to obtain an unfair competitive advantage.

Identification

(3) Identification requirements for entry of a trade mark on the public register of trade marks include clarity, intelligibility, specificity, precision, accessibility, uniformity, self-containment and objectivity.

Multitude of forms

(4) The identification requirements are not satisfied, if the mark could take on a multitude of different appearances, which would create problems for registration of the mark and give an unfair competitive advantage over competitors.

Colour without a message

(5) Colours are normally a simple property of things, or a means of decorating things. They are not normally capable of being a sign. A sign conveys a message. The sign is capable of being registered as a trade mark, if the message is about the source of goods or services.

Colour as a sign conveying a message

(6) Depending on the facts and circumstances of the case, colours, or combinations of colours, designated in the abstract and without contours and used in relation to a product or service are capable of being "a sign."

Graphic representation of colour

(7) As for the second condition of graphical representation, in a mark consisting of two or more colours designated in the abstract and without contours, qualities of precision and uniformity are required. The colours must be arranged by associating them in a predetermined and uniform way.

Colour without form/in a multitude of forms

(8) Those requirements are not met by the mere juxtaposition of colours without shape or contours, or by reference to colours in every conceivable form, so that the consumer would not be able to recall or repeat with certainty the experience of a purchase. The scope of protection afforded by such a mark would be unknown both to the competent authorities responsible for maintaining the register and to economic competitors. Registration would confer unfair competitive advantages on the proprietor of the mark."

Those words in the verbal description of the mark, emphasised above, turned out to be crucial. Sir John held that both the judge and hearing officer had misinterpreted the verbal description. The use of the word "predominant" opened the door to a multitude of different visual forms:  over what might the colour purple might predominate? The application was for the registration of a shade of colour plus other, indeterminate, material: it was not just for a constant single colour, as in Libertel. The colour could not therefore constitute a sign for the purposes of art 2 of the Directive or section 1 of the Act. If it were otherwise:

[t]he result would not be an application to register ‘a sign’, in the accepted sense of a single sign conveying a message, but to register multiple signs with different permutations, presentations and appearances, which are neither graphically represented nor described with any certainty or precision, or at all.

Sir John concluded at paragraph [52]:

The appearance and number of such other signs would be unknown both to the Registrar, who is responsible for the proper functioning of the registration system and is faced with the decision whether or not to register it on a public register, and to competitors, who would not be able to tell from inspecting the register the full scope and extent of the registration. To allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. It would also offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage.

The other two judges, Sir Timothy Lloyd and Lord Justice Lewison, concurred (the first at a little length, the second in five words), and no need was found for a preliminary reference to the Court of Justice. The three Court of Appeal judges have done those who value the commons a favour, putting down a marker to deter would-be absolutists from trying to enclose more than they should be allowed to have. Whether they can stem the incoming tide remains to be seen, but this is an important attempt to do so.

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Previously on IPso Jure: 2012/10 Cadbury can register colour purple as trade mark