Cadbury have been dealt yet another blow in the latest instalment of the ongoing Nestle v Cadbury trade marks saga.

In response to the Court of Appeal’s landmark decision refusing Cadbury’s trade mark application for the colour purple (due to the verbal description not satisfying the requirements of Art 2 of the Directive (pre-reform) [see our previous posts here]), Cadbury sought to ‘alter’ their existing UK registration which used the same – now invalid – description.

The alteration of existing registrations is only allowed in certain narrow circumstances under S44 of the Trade Marks Act 1994. As such, Cadbury sought to delete the invalid wording by arguing that the verbal description constituted a Series of two marks.

Sadly for Cadbury’s, the UKIPO refused to allow the deletion of the alternate wording. The Hearing Officer gave the following three reasons: Firstly, the trade mark had not been applied for as a Series mark. Secondly, following the decision of the Court of Appeal, there was no mark to be deleted as the alternate wording did not constitute a trade mark. Thirdly, the deletion would amount to an alteration which is not allowed under S44 TMA.

The High Court [here] affirmed the decision of the UKIPO Hearing Officer in refusing to allow Cadbury to delete the wording. They held that the mark is not a Series mark and therefore the request to delete one of the Series cannot be allowed [for more on Series marks see our post on the recent Court of Appeal decision on GLEE].

In taking proactive action, Cadbury may have made it easier for a third party (Nestle) to invalidate the registration.

We wait with anticipation on the future examination of Cadbury’s applications for the colour purple using different verbal descriptions.