Friday 7 December 2018

The colour purple

Cadbury UK Ltd v The Comptroller General of Patents Designs And Trade Marks [2018] EWCA Civ 2715 (05 December 2018) is an unedifying case. It is the latest skirmish in the war over the colour purple - not the Pullitzer Prize winning novel of that name by Alice Walker, nor the film made from it by Stephen Speilberg, but the colour of the packaging applied to Cadbury's chocolate, Pantone shade 2685C. It has not yet come to rival the Budweiser 'Hundred Years War' (per Jacob LJ - and BTW, if I may digress slightly, if you have not seen this wonderful article by Brentan O'Toole in the Irish Times of 3 February 2018, conveying the reassuring message that Brexit is not the maddest thing England has ever done, do read it) but it has certainly exceeded the duration of the Seven Years War, and is beginning to approach the duration of the Thirty Years War.

The belligerants in the conflict are Cadbury (which became part of the Kraft empire while the war was raging) and Nestlé, partly through their acquisition some time ago of Rowntrees. The Comptroller General is perhaps cast in the role of a UN peacekeeping force. A second front in the war opened up within the last decade, the territory being fought over there being the shape of the Kit-Kat chocolate wafer bar (a product which I have always considered fatally flawed for the simple reason that there is boring wafer concealed in what would otherwise be a satisfying lump of chocolate, so why is it even worth arguing about?). Although I have not checked, and it would be futile to speculate about the motives of the parties (entertaining, though), there does seem to be a lot of tit for tat involved here.

The Court of Appeal was asked to rule on whether it was permissible for Cadbury to re-categorise their colour trade mark, 2020876A, as a series of trade marks. Their wish to do this gives a striking illustration of how tricky it sometimes is to keep up with the constant changes to trade mark law and practice. The application claimed that the trade mark 'consists of the colour purple'. Then the Registrar (who is also the Comptroller General) promulgated guidance on how to draft a colour trade mark application. In line with this guidance, Cadbury sought to amend their application (which was still pending) to add the words 'as shown applied to the packaging or labelling of goods covered by the registration'. The registrar replied on 9 September 1997 suggesting instead that the description (I think 'representation' is the correct word, going by the statute, though I would also argue that what the words are is in fact a description not a representation, which should to my mind be enough to knock the whole thing on the head) of the mark be amended to read: 'The mark consists of the colour purple, 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.' The conjunction 'or' seems to justify me in characterising this as a two-legged formulation.

Cadbury didn't like the word 'predominant', but accepted it - until the Court of Appeal upheld an opposition to another similar registration, in Société des Produits Nestlé SA v Cadbury UK Limited [2013] EWCA Civ 1174 ("Cadbury 1"). The words used in the registration did not represent a sign, they represented an almost infinite number of signs of which purple was only the predominant element. So Cadbury applied to have the registration changed into a two-part series of trade marks, so they could then surrender the second one - the one that used the word 'predominant'. Retaining the first leg would suffice for most purposes, and the similarlity-plus-likelihood-of-confusion test for infringement would take care of marginal cases.

The problem was that you cannot alter a trade mark after registration. It could be surrendered in part, but ony in respect of some of the goods and services for which it is registered - not for part of the description or representation of the trade mark. If however the trade mark could be treated as a two-part series, it would be possible to delete one part of it. Unfortunately, even when the Registrar suggested amendments to the application Cadbury had not opted to make it a series trade mark (and you can't blame them, as the problem that eventually emerged was unforseen). Could it just be treated as a series? After all, that description reads like a description of a series of trade marks. But the Court of Appeal (Floyd LJ giving the judgment of the Court) took the view that this would be a fiction - that the application was to register a single trade mark, which did not meet the requirements for clarity and precision. It looks to me like a bold attempt to rewrite history to save the trade mark - perhaps tabula in naufragio is a better expression, and certainly one that I'd like to see used a bit more often.

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