The Colour Purple

Monday 19 November 2012

Under the Trade Marks Act 1994, a trade mark cannot be registered if it does not satisfy certain prescribed requirements, including that it must be a ‘sign’ and be capable of being represented graphically. A trade mark can also not be registered if it is devoid of distinctive character, unless before the date of the application for registration it had in fact acquired a distinctive character as a result of the use made of it.

In the case of Société des Produits Nestlé SA –v- Cadbury UK Ltd (2012), the High Court allowed Cadbury’s application to register as a trade mark the particular colour purple that has become associated with their brand.

Cadbury had originally applied to register the trade mark and the Intellectual Property Office (“IPO”) had approved the application on the basis of the evidence of distinctiveness acquired through use of the mark. Nestlé opposed the application, but the IPO hearing officer approved the use of the trade mark on the basis of the evidence which proved use of the colour purple on Cadbury’s Dairy Milk since 1914.

Nestlé appealed to the High Court on the grounds that the mark was not a sign capable of being represented graphically as required by the Trade Marks Act and so was not registerable as a trade mark. They also argued that the specification for the mark should be limited to milk chocolate (as opposed to other types of chocolate) and that the category ‘chocolate for eating’ should not be allowed.

The Judge considered the European Court of Justice case of Libertel Groep BV –v- Benelux-Merkenbureau which had held that a colour was capable of being registered as a trade mark. The Court therefore held that as a matter of EU law, single colours were capable of being ‘signs’ for the purpose of the trade mark legislation. The Court were satisfied that the colour purple was associated with Cadbury’s chocolate by the public and therefore Cadbury were able to register theirtrade mark.

The Court did however find that the use of the colour purple was distinctive only for milk chocolate products and therefore the mark could not be registered in respect of chocolate generally, as other products such as plain, dark or white chocolate did not have the same association. The trade mark is therefore limited to milk chocolate.

The Court were satisfied that the specification of the goods could include reference to ‘chocolate for eating’, which although not a term in common parlance, was a term that was understandable and distinguishable from other types of chocolate, such as ‘cooking chocolate’. Accordingly, the term ‘chocolate for eating’ was not too vague or uncertain.

The trade mark does not extend to chocolate cakes, confectionary or chocolate assortments. This means that Nestlé can continue to use a similar purple colour in its Quality Street assortment.