High Court ruling on chocolate wrapper colour trade mark rights will be welcomed by Cadbury, says expert

In a ruling earlier this week the High Court largely dismissed Nestlé's appeal against previous findings by the UK's Trade Mark Registry in relation to Cadbury's trade mark rights to the Pantone 2685C shade of purple.

The judgment now issued by Mr Justice Birss QC, however, means that Cadbury owns exclusive rights to use packaging with the Pantone 2685C for "milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate [and] preparations for making drinking chocolate".

The judge did, however, state that Cadbury could not claim exclusive rights to the use of the purple coloured wrappers for dark or white chocolate products.

Trade mark law expert Jo Alderson of Pinsent Masons, the law firm behind Out-Law.com, described the High Court judgment as "good news for Cadbury".

"Registration of colour trade marks is unusual and such registrations are powerful tools to prevent dilution of the distinctive nature of a colour as a brand, in particular through lookalike packaging and 'me too' products, common in the food and confectionary market," she said. "Cadbury has managed to secure this registration by providing substantial evidence of longstanding use of the colour and the high level of association of the colour with Cadbury and its products."

"Due to the high hurdles required to register a colour mark, the registration has been restricted to certain categories of products for which the purple colour has become distinctive, essentially being milk chocolate for eating and drinking. The registration will help Cadbury to police the use of the same or similar shades of purple in the chocolate market more effectively," Alderson added.

In the UK, trade mark protection can be obtained by registering signs with the Trade Marks Registry at the UK's Intellectual Property Office. Under the Trade Marks Act "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings" can be registered subject to certain conditions.

The Act states that trade marks may consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging and must not be registered if they are "devoid of any distinctive character" or if they "consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services".  This would include a colour that was generally associated with a category of goods. Trade marks must also not be registered if the application has been made in "bad faith".

A trade mark can also be revoked if it is used in a way that might mislead the public "particularly as to the nature, quality or geographical origin of those goods or services", according to the Act.

Generally, colours are only capable of registration as trade marks if the owner can establish that the colour has acquired distinctive character through use. Cadbury had to provide substantial evidence of the use of the purple colour on its packaging as well as association by the public of this colour with Cadbury to demonstrate that purple Pantone 2685C had acquired distinctiveness. Colour marks must also be capable of graphic representation and so usually must be registered by reference to a particular Pantone colour.

Mark owners may also obtain 'goodwill' rights to unregistered marks, including colours, giving them legal protection under the laws of 'passing off'. If mark owners can prove that their use of a trade mark has established 'goodwill' in the business associated with that trade mark protection to that mark may apply. Goodwill is essentially a reputation in the mark.

If another trader 'passes off' their services as being those of mark owners and appear to claim that their services are theirs or that they are in some way connected or have been endorsed, then mark owners can take action. Mark owners can claim damages or seek an injunction to prevent that use, so long as they can show that they have or are likely to suffer damage as a result of the use.

Nestlé had challenged whether the Pantone 2685C colour shade could, fundamentally, be registered as a trade mark, claiming that Cadbury's application for the sign was not sufficiently definitive. However, Mr Justice Birss QC said that EU law allows companies to trade mark particular colours and that Cadbury had developed a sufficient reputation through its use of the Pantone 2685C shade to enable it to register the sign.

"Since single colours per se are, as a matter of European law, capable of being signs ... (i.e. they are capable of being a sign, capable of being represented graphically and capable of distinguishing) then ... in my judgment the colour purple (Pantone 2685C) applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of chocolate, is capable of being a sign within [the terms of EU trade mark law]," the judge said.

"The answer to the question I posed at the outset is clear on the basis of the current state of European law. Since on the evidence the public associate the colour purple itself with Cadbury's chocolate, Cadbury are entitled to a registered trade mark for that colour on the relevant goods and that is the mark they have applied for," he added.

However, the judge ruled that registrar Allan James had been "too broad" in his ruling in relation to his findings on the "distinctiveness" of Cadbury's purple packaging. Accordingly, Mr Justice Birss QC said that whilst Cadbury could benefit from exclusive rights to use the particular purple shade packaging for milk chocolate products, it could not do so for white or dark chocolate goods.

"Particularly bearing in mind the public interest in not unduly restricting the availability of colours for the other traders who market goods or services of the same type ... in my judgment it would not be right to say that the colour purple is distinctive of chocolate generally without specific evidence dealing with other kinds of chocolate such as plain or white chocolate," the judge said. "Accordingly the finding of distinctiveness was too wide and on that basis the specification is too broad. I will allow the appeal in this respect."

As a result Mr Justice Birss QC said that Cadbury could legitimately own exclusive rights to use Pantone 2685C packaging for "milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate [and] preparations for making drinking chocolate".

A spokesperson for Nestlé told Out-Law.com: "Nestlé appealed the original decision as we did not agree with it on a number of issues. This High court judgment has taken on board our concerns and this partial victory further protects our brands by further limiting the range of goods for which Cadbury’s application may be registered. We are reviewing the full judgement before we decide our next move."