End of the purple reign

Thursday 10 October 2013

In a previous blog, we looked at the case of Société des Produits Nestlé SA –v- Cadbury UK Ltd (2012), in which the High Court allowed Cadbury’s application to register as a trade mark the particular colour purple that has become associated with their brand. That decision has now been overturned by the Court of Appeal.

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.

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.

The High Court 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 their trade mark.

Nestlé appealed to the Court of Appeal on the basis that the mark applied for by Cadbury did not fulfil the criteria that a trade mark must be a ‘sign’ and be ‘graphically represented’. The Court of Appeal agreed and overturned the decision allowing the registration of the trade mark.

The Court found that the trial Judge had erred in principle and had misinterpreted the verbal description of the graphic representation of the mark. Cadbury’s application covered the registration of a shade of colour plus other material and was not therefore an unchanging application of a single colour.

In the circumstances, the Court of Appeal was not satisfied that the mark constituted a ‘sign’ that was ‘graphically represented’. The lack of certainty which would be created gave sufficient reason for the decision to be overturned. The Court took the view that allowing registration of the mark would “offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage”.