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.

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

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.