The colour purple and trade mark registrationsPrint publication
We have previously described the challenges of registering a colour as a trade mark, including the unsuccessful attempt by Cadbury to register the purple colour of its chocolate bars. In Société des Produits Nestlé SA v Cadbury UK Ltd , the Court of Appeal had held that: “The description of the mark as including not just the colour purple as a sign, but other signs, in which the colour predominates over other colours and other matter, means that the mark described is not ‘a sign’. There is wrapped up in the verbal description of the mark an unknown number of signs”.
On the back of this decision, it seems that Cadbury has been reviewing its existing registrations to ensure they are not susceptible to attacks on validity based on the Court of Appeal’s reasoning. However, it seems that the company’s difficulties with registration of the colour purple have not gone away. In Cadbury UK Ltd v Comptroller General of Patents Designs & Trade Marks and Société des Produits Nestlé SA (Intervener)  Cadbury appealed against a hearing officer’s refusal of its request to delete a mark from an alleged series of marks. The mark was described as consisting “of the colour purple as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”. Cadbury had sought to delete the words “or being the predominant colour applied to the whole visible surface”, which would have limited the scope of the mark to the colour purple applied to the whole visible surface of the packaging of the goods.
Cadbury’s argument was that the description was in fact a description of two series marks and that one could be deleted leaving a single validly registered mark. The hearing officer was unimpressed with this argument, finding that the mark had not been applied for as a series mark. The deletion in question would involve an alteration of the mark, contrary to section 44 of the Trade Marks Act 1994 (“Alteration of registered trade mark”, which states that “A registered trade mark shall not be altered in the register, during the period of registration or on renewal”). On appeal, Cadbury argued that the hearing officer had erred in failing to recognise that the mark was a series mark, comprising two marks and that the mark’s description was a description of two alternative marks.
The High Court gave this argument short shrift, supporting the hearing officer’s finding that the description of the mark as a whole was of an unknown number of signs, including not just the colour purple, but other colours in which the colour purple predominated. There was nothing to suggest that the description was of two marks or a series mark. Further, in line with the Court of Appeal decision, the single common characteristic – the predominance of the colour purple – was patently insufficient to satisfy the criteria for series marks. For example, purple might, in any particular sign, be the predominant colour in terms of area, but there might be yellow or green spots as well and it might be those yellow or green spots which contribute to the sign’s distinctive character.
The High Court’s reasoning – and that of the hearing officer – follow that of the Court of Appeal in the earlier case involving Cadbury and the colour purple. The decisions on series marks and alterations are also consistent with prior authority.
  EWCA Civ 1174
  EWHC 796 (Ch)