Cadbury’s colour purple mark allowed, subject to amendment as to scope of protection

United Kingdom
In a preliminary decision, the UK Intellectual Property Office (IPO) has dismissed Nestlé’s opposition to Cadbury’s application to register the colour purple (Pantone 2865c) as a trademark for chocolate bars, tablets and drinks (Case O-358-11, October 20 2011). The IPO found that the colour had acquired enough distinctive character associated with Cadbury’s goods. However, in a partial victory for Nestlé, the mark will not extend to chocolate confectionary, assortments and cakes.
Cadbury claimed to have been using the colour purple (albeit in varying shades) on its chocolate bars since 1914, settling on a shade close to Pantone 2865c in 1985. Today the colour is used on numerous products ranging from the original Dairy Milk bar to Cadbury Buttons, Cadbury Milk Tray, Flakes, Mini Eggs and Picnics. 
In 2004 Cadbury applied for the registration of the pantone 2865c colour mark, but the registry did not approve the mark for protection until 2008. In August 2008 Nestlé filed an opposition challenging the application on several grounds under Section 3 of the Trademarks Act 1994.
Nestlé’s contentions that the requirements of Section 1(1) of the act had not been satisfied were rejected by the IPO. Section 1(1) provides that "a 'trademark' means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings", and Section 3(1) provides that "signs which do not satisfy the requirements of section 1(1)" should not be registered.

The registrar found that, in the context, the colour purple was capable of constituting a sign, and the graphic representation of the mark was sufficiently precise. The registrar was not persuaded by Nestlé’s submissions that:
  • the representation of the mark as put forward by Cadbury (“The colour purple (Pantone 2685C), 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”) was too vague in that it would permit a material variation of the proportion of the packaging bearing the colour; and
  • the reference to purple being the “predominant colour” implied that another colour could be present (which meant that the mark was effectively a colour combination).
Similarly, the registrar rejected Nestlé’s submissions that the application had been made in bad faith because Cadbury had no intention of using the mark “applied to the whole visible surface” of the products (Section 3(6) provides that "a trademark shall not be registered if, or to the extent that, the application is made in bad faith”).
The decision thus rested on Cadbury’s ability to provide sufficient evidence to establish that, at the date of the application, the mark had acquired sufficient distinctiveness. 
Following the guidance from the Court of Justice of the European Union in Libertel (Case C-104/01) and Windsurfing Chiemsee (Cases C-108 and C-109/97), the registrar noted that, whilst the public’s perception of the use of a colour is not necessarily the same as it would be with a traditional word mark, the method of assessing whether the mark had acquired a distinctive character remained the same. 

Therefore, the length of time and the extent of the use of the mark should be taken into account, as well as the amount spent promoting it as a mark. Moreover, if a significant proportion of the relevant public are shown to identify the goods as originating from a particular undertaking because of the mark, the registrar must find that the mark has acquired a distinctive character. Further, in assessing whether a mark is distinctive, the registrar may take account of statements from the trade and the results of public surveys (the registrar noted that the number of colours available was limited and, therefore, there was a public interest in not unduly restricting the availability of colours). The registrar considered the evidence of acquired distinctiveness (including survey evidence) to determine whether the colour mark applied for was distinctive of Cadbury’s goods (and, if so, which goods). The registrar concluded that the mark had acquired distinctiveness in relation to chocolate in bar and tablet form, as well as chocolate drinks. However, Cadbury had not shown that its use of the colour purple had endowed it with the necessary distinctive character in respect of chocolate assortments (notably, Cadbury Roses were light blue), chocolate confectionary at large (although the specification could be restricted to ‘eating chocolate’) or chocolate cakes.
The IPO’s final ruling will follow, which will start the period for any appeal.
Jeremy Dickerson and Emily Roberts, Burges Salmon LLP, Bristol

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