Cadbury ruling offers guide to registering colour-based trade marks

The clear and concise judgment, in a case involving chocolate specialists Cadbury, provides guidance that will help businesses define the acceptable parameters of a colour-based trade mark application.

History of the dispute

Cadbury and rivals Nestlé, for many years, challenged one another’s rights to register certain trade marks in the UK. One of the disputes concerned Cadbury’s application to register a specific shade of purple, Pantone 2685C, as a UK trade mark for use on packaging for its milk chocolate bar, which Nestlé opposed.

Though the High Court in 2012 initially ruled in Cadbury’s favour, the Court of Appeal overturned that decision in 2013. The Court of Appeal held that the colour mark as described in Cadbury’s application lacked the required clarity, precision, self-containment, durability and objectivity to qualify for registration as a ‘sign’ under the UK Trade Marks Act (TMA) 1994.

In its trade mark application, Cadbury had indicated that Pantone 2685C would apply either to “the whole visible surface” or be “the predominant colour applied to the whole visible surface” of the packaging. Use of the word ‘predominant’ was deemed too vague by the Court of Appeal because it did not specify the degree to which the colour would cover the packaging, meaning that the mark could be used in a multiplicity of forms, together with other unspecified colours.

Following the Court of Appeal’s ruling, Cadbury filed three new trade applications at the UK Intellectual Property Office (UKIPO) in respect of Pantone 2685C. The applications were all similar and each concerned goods falling within the same class, class 30, which covers chocolate and similar food and drinks products. However, each of the applications contained different descriptions of the mark. Nestlé initially opposed each of the applications, including on the ground that the marks did not fulfil the requirements of a sign under the TMA.

In 2019, the UKIPO sided with Cadbury in relation to one of its applications, which described the mark as "The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods”. However, it sided with Nestlé in respect of the other two applications, where Cadbury had described the mark as “The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods” (the '361 application) and by reference to "The colour purple (Pantone 2685C), shown on the form of application” only (the '822 application), respectively.

Cadbury raised an appeal over the two applications that had been rejected, but before the appeal could be heard, it reached a settlement with Nestlé relating to Cadbury's use of the colour purple. Despite settlement being reached, and Nestlé no longer being a party to proceedings, the High Court decided to hear Cadbury’s appeal. Mr Justice Meade agreed with the assessment of the comptroller-general of patents, designs and trade marks at the UKIPO, who intervened, that the case raised an area of law that was “uncertain and of some importance”.

The new ruling

Cadbury’s appeal in relation to the ‘361 application was not successful. Mr Justice Meade agreed with the UKIPO hearing officer who had originally considered Nestlé’s opposition that the application suffered from the same potential for multiplicity of forms as the mark which was at the centre of the 2013 ruling of the Court of Appeal. This was because it did not refer at all to the degree to which and the location where the colour purple would be applied to the packaging.

Mr Justice Meade was of the view that the wording of the ‘361 application was “worse than that rejected by the Court of Appeal”. He said: “Removing the wording held by the Court of Appeal to let in multiple forms and to be objectionably ambiguous is cosmetic at best and does not help. It preserves all the practical problems of scope and adds more.”

However, the judge accepted Cadbury’s appeal in relation to the '822 application. The hearing officer had objected to this application on the basis that the manner of use of the colour, for example on packaging, advertising materials or applied to the goods themselves, had not been specified in the application. However, Mr Justice Meade said it was not necessary to specify in the application how or where the mark would be used.

According to the judge, use of the colour was use of the sign, whether used on goods, packaging, business documents or elsewhere. The sign was not different from one context to another. He held that if the hearing officer's interpretation of '822 was correct, it would mean that a colour per se mark could only be validly registered where it was limited to a single manner of use. He said this approach would be inconsistent with judgments from the European courts, each of which had confirmed that a colour per se "without contours" can constitute a valid "sign" and therefore a registrable trade mark.

Mr Justice Meade added that, while wording like "predominant" at the heart of the Court of Appeal ruling in 2013 allowed ambiguity around what the mark actually was, a single colour sign did not. He also said that he found it hard to see why the decision in relation to the '822 application "would not apply to, at least, any consumer goods". This suggests that his ruling in relation to colour marks per se is intended to set a precedent that would apply in a broader context than to just this case.

A helpful checklist for businesses

This ruling shows that it is possible to register colours as trade marks. It highlights, however, the need for applicants for colour marks to ensure that the mark they seek to register gives clear specificity by stating how the colour is applied to the goods in question.

Mr Justice Meade helpfully set out a checklist for applicants for colour marks in his judgment. Businesses that follow the checklist will stand the best chance of being successful with applications to register colour marks:

• An application to register a colour trade mark must: consist of a sign; be capable of graphical representation; and be capable of distinguishing the goods or services of one undertaking from those of other undertakings.
• Applicants should avoid a description or representation of a colour mark that could be understood to protect various different appearances. This potential for a multitude of forms risks giving a trade mark proprietor an unfair competitive advantage over competitors and so is likely to be an obstacle to the mark being registered.
• The mark applied for must satisfy the requirements of clarity, intelligibility, specificity, precision, accessibility, uniformity, self-containment and objectivity.
• Colours are usually a means of decorating things and are not normally capable of being a "sign". A sign conveys a message and therefore a colour based on a sign is only capable of being registered as a trade mark if it provides such a message about the source of goods or services.
• Depending on the facts and circumstances of the case, colours, or combinations of colours, designated in the abstract and without contours and used in relation to a product or service, are capable of being a "sign".
• In a mark consisting of two or more colours designated in the abstract and without contours, the representation of the mark must be precise and the colours arranged in a predetermined and uniform way.
• Inclusion of a recognised colour reference in the trade mark application, such as a Pantone or RAL number, is critical to the likelihood of success of the application. However, a colour code alone may not be sufficient to overcome potential deficiencies present in the wording describing placement of the colour.
• Clear and precise definition of how the colour will be used is therefore imperative, even if that description extends to the whole surface of a product.

A version of this article was first published by International Law Office.