22nd August 2022
Since it first tried to obtain a trade mark for the colour purple, Cadbury has been engaged in an ongoing legal battle with fellow confectionary giant Nestlé. Despite suffering defeat in recent years however, it appears Cadbury’s luck may have changed. On 5th July 2022, Cadbury achieved partial success in its appeal against the Hearing Officer’s decision that one of its purple colour marks was not registerable as a trade mark.
Registering colours as trade marks has always presented challenges. According to Article 3 of Directive (EU) 2015/2436 (Article 3) ‘a trade mark may consist of… colours’. Unfortunately for Cadbury, registration isn’t as simple as it sounds. The difficulties of securing a trade mark for a colour were highlighted in Libertel Groep BV v Benelux-Merkenbureau (C-104/01). Firstly, the Court of Justice of the European Union (CJEU) stated that ‘a colour per se cannot be presumed to constitute a sign. Normally a colour is a simple property of things. Yet it may constitute a sign. That depends on the context in which the colour is used’. It then went on to say that ‘none the less, a colour per se is capable, in relation to a product or service, of constituting a sign’. There is an obvious contradiction between these two statements.
Cadbury previously defined the colour purple as ‘the predominant colour applied to the whole surface of the packaging of the goods’. The inclusion of the word ‘predominant’ resulted in the Court of Appeal of England and Wales ruling in favour of Nestlé in 2013. The Court held that the word ‘predominant’ could not be used to refer to a single colour mark. Instead, it meant that Cadbury’s use of the colour purple could be unlimited. The description prevented legal certainty and would provide Cadbury with an unfair competitive advantage.
Back to the present day and Cadbury was armed with three new purple colour marks, each with a different description. The new marks were UK Application No. 3019362 (362), UK Application No. 3019361 (361) and UK Application No. 3025822 (822). Nestlé opposed all three. The Hearing Officer dismissed the opposition against mark 362 but allowed the opposition in respect of marks 361 and 822. Cadbury appealed the decision.
The description for mark 361 reads ‘the colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods’. Here, Cadbury had essentially kept the definition from 2013 minus the word ‘predominant’. Disappointingly for Cadbury, the Court decided that this new definition was actually worse than the original one. Removing the word ‘predominant’ had not changed the fact that Cadbury’s application of the colour purple would be unlimited. The Court agreed with the Hearing Officer’s assessment and upheld Nestlé’s opposition to mark 361.
The Court then considered Cadbury’s appeal in relation to mark 822. The description for which reads ‘the colour purple (Pantone 2685C), shown on the form of application’. The Court decided to uphold the appeal in respect of this mark. This has done little to clarify the position on trade marking colours. On the one hand, this description conveys absolutely no limits on Cadbury’s use of the colour purple. The scope of use for mark 822 appears to be even wider than that of mark 361. On the other hand, not permitting the registration of Pantone 2685C would contravene Article 3. It would suggest that a colour can only be registered as a trade mark if used in a certain context. This could include limiting use of the colour for a single purpose. Article 3 conveys no such restriction on the registration of colours as trade marks.
Whilst this case represents a win for Cadbury, it has not particularly clarified the position on registering colours as trade marks. The take away from this judgment is that colours with descriptions that provide context are at greater risk of being opposed and/or invalidated. Meanwhile those which focus purely on the colour as a single concept, in line with Article 3, have a higher chance of being registered.
Trade mark specialists within Walker Morris’ Intellectual Property, Trade Marks and Designs team can provide expert advice and guidance on trade mark clearance and filing and representation relating to contentious trade mark and design matters. For further advice or information, please contact Alan Harper or any member of the Intellectual Property, Trade Marks and Designs team.
 Société des Produits Nestlé S.A. v Cadbury UK Limited v The Comptroller-General of Patents, Designs and Trade Marks  EWHC 1671 (Ch) (Nestlé v Cadbury)