June 13, 2019
Grey skies for colour trade marks
Grey skies for colour trade marks

There is nothing black and white about protecting colour trade marks and the recent past months have not looked very bright for owners of colour trade mark registrations.

In December 2018, the UK Court of Appeal ruled that Cadbury could not amend its 1995 registration for the colour purple. That left it vulnerable to the same fate as its 2004 application for the colour purple, after Nestlé’s long-running opposition proceedings against that mark were finally successful in 2013.

The two marks share the same description and limitation, namely:

‘The mark consists of the colour purple (Pantone 2685C) 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’s 2004 application was refused after the UK Court of Appeal ruled that the mark did not constitute ‘a sign’ that is ’graphically represented’. It therefore did not comply with the requirements for a trade mark as per section 1(1) of the Trade Mark Act 1994 (“the Act”). The Court’s conclusion was based on the phrase ‘or being the predominant colour applied to the whole visible surface’ within the description of the mark. It was held that this wording opened the door for protection of a multitude of signs which were not graphically represented or defined with certainty or precision, and therefore, the description was not clear or precise as required.

As a result of this decision, Cadbury applied to amend its 1995 registration so that it incorporated this same description and deleted the offending wording in order to ensure its validity. The only way to do so, however, would be if the mark constituted a series, as the Act provides for the deletion of a mark in a series. Cadbury argued that the mark did constitute a mark in series, the first being the colour purple ‘applied to the whole visible surface of the packaging’ and the second, the colour purple ‘being the predominant colour applied to the whole visible surface of the packaging’.

The Court of Appeal ultimately decided after considering all the facts that the 1995 registration was an attempt to register a single trade mark which does not meet the requirements of clarity and precision and consequently does not constitute a series. Although the court felt sympathy for Cadbury, as the description used by Cadbury for both the 1995 registration and the 2004 application for the colour purple was in accordance with the Guidance published by the UKIPO in 1997, this wording does not meet the requirements of precision and clarity as is well established now in case law. Therefore, the offending wording remains part of the registration, which is now open to attack by third parties.

Due to the doctrine of colour depletion (the theory that there are only a limited number of colours), it is very difficult to obtain a registration for a single colour mark as it gives the owner a monopoly on that particular colour and in turn, whether direct or indirect, can hinder competition. Therefore, it is imperative to be very specific about what it is that you want to protect.

It is also important to note that whereas having a registration gives the owner a level of comfort, laws can change over time and owners should regularly review their intellectual property portfolios to ensure that their trade mark registrations meet current requirements.

Cadbury v Nestle (purple series mark) [2018] EWCA Civ 2715

Food & Drink /  Trademarks

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