Is the future bright for colour marks?
The UK Supreme Court has ruled that Cadbury may not appeal a refusal to register the colour purple as a UK trademark.
Well-known confectioner Cadbury first applied to register Pantone 2685C for various chocolate products back in 2004. The application was accepted by the UK Intellectual Property Office and the High Court, despite opposition from Cadbury’s competitor, Nestlé.
Nestlé appealed to the Court of Appeal. The court gave its judgment in October last year, overturning the previous decisions and refusing to allow Cadbury’s application to be registered. In a landmark ruling, the Court of Appeal said that the colour mark did not meet the essential requirements for registration in that it was neither a “sign” nor “capable of being represented graphically”.
Cadbury’s application had shown the mark as a rectangular block of colour, and described it as 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”.
The Court of Appeal said that the use of the word 'predominant' in the verbal description of the mark opened the door to a multitude of different visual forms of the mark, not merely a single colour, because of the implied reference to other colours and visual material. There was, wrapped up in the verbal description of Cadbury’s mark, an unknown number of marks, not just one mark. Furthermore, the mark did not satisfy the requirement of graphic representation because it lacked the required “clarity, precision, self-containment, durability and objectivity” to qualify for registration. This meant that no-one would know the full scope of the registration and this would not comply with the principles of certainty and fairness by giving a competitive advantage to Cadbury.
The Supreme Court has now refused Cadbury permission to appeal the Court of Appeal’s ruling. This means that Cadbury cannot, for now, register the colour purple as a trademark in the terms of the description of the mark applied for.
What does this mean if you are looking to register a mark in the United Kingdom which is less conventional than the usual trade name or logo, such as a colour, sound or smell? The Court of Appeal did not say that a colour mark per se could not be registered. It just did not like how Cadbury had described the mark in its application. That means that it is still possible to register unconventional marks as UK trademarks, but that you must take care to describe your mark with sufficient precision in your application. Indeed, Cadbury can apply again to register the colour purple, but this time word its application differently (in fact, a number of new applications were filed in 2013). Getting the application right can be the difference between successfully registering the mark and the mark being refused, resulting in wasted costs and delays in launching or expanding your brand.
Another implication of the Court of Appeal ruling is that, if you already own an existing colour registration that describes the colour as ‘predominant’, it could be vulnerable to revocation if challenged.
Gillian Dennis and Chris McLeod, Squire Sanders (UK) LLP, London
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