Registrar bars Cadbury’s purple colour mark

In Cadbury Limited v Beacon Sweets and Chocolates (Pty) Ltd (Case 97/10661), the registrar of trademarks has refused to register a specific shade of purple as a trademark. The registrar held that the mark, in the form in which it was represented in the application, was not capable of distinguishing chocolate confectionary pursuant to Sections 9 and 10(2)(a) of the South African Trademarks Act.

Cadbury Limited, a well-known confectionary manufacturer, applied to register the colour mark with the Trademarks Registry for chocolate confectionary in Class 30 of the Nice Classification. It submitted the application in the form of a coloured square, accompanied by the following statement:

“the mark consists of the colour purple (substantially as shown in the representation affixed to the form of the application), as applied to labels or packaging for chocolate confectionary products.”

Beacon Sweets and Chocolates (Pty) Ltd, a South African company, opposed the application on the grounds that, among other things, the mark was unregistrable because it consisted of a sign that was not capable of distinguishing within the meaning of Sections 9 and 10(2)(a) of the Trademarks Act.

In order for a trademark to be registrable in South Africa, it must either be (i) inherently capable of distinguishing the goods and services to which it applies from those of another proprietor, or (ii) capable of distinguishing the goods and services as a result of prior use. Cadbury asserted that it had been making use of the purple colour mark on its packaging since 1938 and therefore the mark had the capacity to distinguish.

The registrar noted that if used as a mark, a colour must be “represented visually, particularly by means of images, lines or characters, so that it can be precisely identified” and that “the graphic representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

Turning to Cadbury’s application, the registrar held that it did not meet the requirements for registration. The fact that it was made up of the colour alone meant that it did not have the necessary capacity to distinguish pursuant to Sections 9 and 10(2)(a). As a result, he dismissed the application with costs.

This judgment suggests that a colour mark may be registrable if the application includes, for example, the packaging on which the mark will be used (clearly indicating the areas of use for the colour and with all other elements removed), provided that the representation of the mark is clear and objective.

Duncan Maguire, Spoor & Fisher, Centurion