Colour clash continues
Charlie Bond reports on the latest decision in the confectionery wars. Société des Produits Nestlé SA v Cadbury UK Ltd, High Court, 5th July 2022.
Key points
- A single colour can be registered and function as a mark
- To meet the threshold of registrability, a mark must be capable of clear and precise representation; reference to internationally recognised codes is not alone sufficient to ensure a mark can be registered successfully
- Simple and clear marks with less potential for misinterpretation have a greater likelihood of becoming registered
This case is an appeal and arose from a now‑settled opposition raised by Nestlé against various trade mark applications for Cadbury’s signature colour purple.
Background
The opposition was first heard by Hearing Office Louise White (the HO) on 12th April 2019, when two of Cadbury’s three marks were deemed invalid:
- Application No. 3 019 361: The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods (the First Mark). The HO upheld the opposition against the First Mark and deemed it invalid.
- Application No. 3 025 822: The colour purple (Pantone 2685C), shown on the form of application (the Second Mark). The HO upheld the opposition against the Second Mark and deemed it invalid.
- Application No. 3 019 362: The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods (the Third Mark). The HO rejected the opposition against the Third Mark and deemed it valid.
Despite the opposition being settled soon after this decision, the Comptroller‑General of Patents, Designs and Trade Marks sought to intervene and continue the appeal in order to create some certainty in an area that has otherwise been quite opaque.
This decision to continue to appeal was approved by Mr Justice Meade within his judgment.
Case law
In his judgment, Meade J applied the principles derived from the case law on registration of colour marks – notably the reasoning of the Court of Justice of the European Union (CJEU) in Libertel and the Court of Appeal (CA) in a previous skirmish between Nestlé and Cadbury. ( Libertel Groep BV v Benelux‑Merkenbureau Case C‑104/01) (Nestlé v Cadbury UK Ltd [2013] EWCA Civ 1174)
In Libertel, the CJEU decided that “a colour per se, not spatially delimited, may … have a distinctive character … provided that … it may be represented graphically in a way that is clear, precise, self‑contained, easily accessible, intelligible, durable and objective”.
The CJEU indicated that a colour mark could therefore be sufficiently clear and precise by referencing an internationally recognised code such as Pantone or RAL within a registration.
In Nestlé v Cadbury, Cadbury had again applied for the registration of the colour purple as a trade mark.
The application included a Pantone number and the description “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”.
This application was rejected by the CA because use of the word “predominant” created multiple, different visual forms and led to the implication that other colours may be used that were not disclosed in the application.
Per Libertel, the mark therefore lacked the necessary clarity to constitute a sign and so the application failed.
Decision
In this case, the specific questions which Meade J had to assess were as follows:
- By referring to the degree of application to the packaging, does the First Mark avoid the problem of ambiguity that the CA identified as having afflicted the mark in Nestlé v Cadbury?
- By using a Pantone designation without reference to the manner of use, is the Second Mark capable of being a sign, or does it also fall foul of having issues with ambiguity as identified in Nestlé v Cadbury?
Assessing the two colour mark applications that were at the core of the dispute, Meade J concluded as follows.
The First Mark, which was described as having been “applied to the packaging of the goods”, was invalid as it did not fulfil the requirements of a sign under s1(1) of the Trade Marks Act 1994 (TMA).
Meade J agreed with the previous decision of the HO and asserted the description was “significantly, undesirably and unnecessarily unclear whether combination marks including purple and other colours would be within the scope of the right applied for”.
It therefore was not capable of being a sign and registered as a trade mark.
The Second Mark, which made no reference to the packaging of the goods at all, was, in contrast, valid as it did fulfil the requirements of a sign. Meade J overturned the previous decision of the HO in stating that the mark was valid.
He affirmed that conceptually this was because the mark boiled down to one single thing: the colour purple. This meant that the registration was unaffected by the central problems that plagued the invalid First Mark, concerning how the colour was then applied to the packaging.
Although not subject to the appeal, Meade J further commented that the Third Mark (“applied to the whole visible surface of the packaging of the goods”) was also capable of registrability in his view (in agreement with the decision of the HO).
Unlike the First Mark, the Third Mark clearly stated how the colour would be applied to the packaging, thereby ensuring the mark was not ambiguous.
Impact
This case has affirmed the reasoning underpinning the Libertel decision – a single colour can be registered and function as a mark.
What appears to remain the downfall of registering colour marks is then meeting the criteria set out in s1 TMA – ensuring that they are capable of clear and precise representation to the extent that another’s goods can be distinguished.
Going forward, therefore, those who wish to register colour marks will need to ensure that the description provided is sufficiently clear and precise.
Even with reference to an internationally recognised code such as Pantone or RAL (as advised in Libertel), it is still possible for a colour mark not to meet the required standards set out in s1 TMA and therefore to be deemed unregistrable.
Indeed, as illustrated in Meade J’s decision, a simpler mark with a sole reference to the colour and code could be more likely to succeed in being registered due to its simple and one‑dimensional nature.
That said, this decision is silent on s3(1)(b) TMA, and therefore colour mark applicants may wish to be mindful of ensuring that, in addition to their marks being clear and precise, they also have a sufficiently distinctive character (or that the mark has acquired such a character through use – something that is very difficult to show with colour marks).
Within the judgment, Meade J also stressed that this case was not intended to give any categorical view on the infringement of colour marks and only refers to the registrability of such marks.
By overturning the HO and allowing the registration of the Second Mark, which does not make any reference to the application of the colour, Meade J appears to have given Cadbury a trade mark with broad scope to be enforced.
Questions arising
Two key questions arise from this outcome.
First, how will the mark be interpreted when being enforced against, for example, a potential infringer using the relevant shade of purple only partially on packaging or as part of a logo?
Does the lack of any limiting language in the mark description mean any use of the colour is infringing?
Second, might the mark be vulnerable to a non‑use validity attack in the future if Cadbury’s packaging uses the purple colour only in conjunction with other marks or branding? Is it then not being used in the form in which it is registered?
We will have to wait for the next battle in the confectionery wars to find out…
Charlie Bond is a Senior Associate at Gowling WLG
Lucy Singer, an Associate at Gowling, co-authored.
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