In the latest – and potentially final – instalment of the Cadbury v Nestlé purple trade mark saga, the High Court has clarified how the Court of Appeal’s 2013 colour mark judgment involving the same parties should be applied to pure colour marks (Société des Produits Nestlé SA v Cadbury UK Ltd ([2022] EWHC 1671 (Ch), 5 July 2022)).
Background
In its 2013 Nestlé v Cadbury judgment, the Court of Appeal upheld the rejection of Cadbury’s application to register a mark for a particular shade of purple ‘applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods’. The focus of the court’s reasoning was the ambiguity created by the word ‘predominant’, which ultimately prevented the mark from being represented in the register (it was not a ‘sign’ for the purpose of Section 1(1) of the Trade marks Act (1994)).
The present case involved an opposition brought by Nestlé against three applications by Cadbury to register the colour purple (by reference to Pantone number) for various chocolate products:
- ‘applied to the packaging of the goods’ (mark 361);
- ‘applied to the whole visible surface of the packaging of the goods’ mark 362); and
- without any reference to application – that is, the colour purple per se (mark 822)
Nestlé opposed the applications on absolute grounds under Section 3(1)(a) – in other words, that the marks did not meet the Section 1(1) definition of a ‘sign’. It also opposed for lack of distinctive character under Section 3(1)(b), but that opposition was stayed pending the outcome of the current opposition. At first instance, the hearing officer rejected the opposition of mark 362, but upheld the opposition of marks 361 and 822, finding that they were both casualties of the ambiguity prohibited by Nestlé v Cadbury 2013. Mark 361, on the other hand, provided sufficient clarity through its reference to ‘the whole visible surface of the packaging’.
In the period between the hearing officer’s decision and the appeal, Nestlé and Cadbury settled their long-running dispute. The appeal continued nonetheless, with the Comptroller-General of Patents, Designs and Trade Marks intervening in Nestlé’s place because of the importance of the appeal’s subject matter.
The appeal
On appeal, the judge found that the hearing officer had been right to uphold the opposition of mark 361, but not 822.
As with Cadbury’s original use of ‘predominant’, the description ‘applied to the packaging of the goods’ for mark 361 left it significantly, undesirably and unnecessarily unclear whether combination marks including purple and other colours would be within the scope of the right applied for (leaving the mark able to take on a multitude of potential appearances and consequently giving Cadbury an unfair competitive advantage). The removal of the word ‘predominant’ from the description of Cadbury’s 2013 mark was “cosmetic at best”, preserving the ambiguity and practical problems of Cadbury’s original application and “adding more”.
However, the judge held that the hearing officer had been wrong to apply the ‘multitude of forms’ argument to mark 822 in the same way. Mark 822 was a pure colour mark – known as a Libertel mark after the CJEU decision of the same name – and was therefore registrable provided it was graphically represented in a way that was “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.
Whereas marks 361 and 362, and Cadbury’s 2013 mark, were all for a colour applied to goods in a particular way (e.g. to the whole visible surface of their packaging), a Libertel mark is the colour per se – however it is applied in practice – and cannot suffer from ‘multitude of forms’ ambiguity unless such ambiguity is “let in” by additional wording (such as ‘predominant’). To subject Libertel marks to Nestlé v Cadbury criticism would render pure colour marks (without additional description of their application) unregistrable. That would be inconsistent with the Libertel decision.
Comment
The judgment is helpful in clarifying that pure colour marks, with no description of their application (but otherwise meeting the Libertel criteria), are not susceptible to the ‘multitude of forms’ criticism that can be levelled at colour marks that provide for the colour to be applied in a particular way. This conclusion will be welcomed by applicants and practitioners dealing with colour mark applications, as will the judge’s general comments on assessing whether different colour marks are identical.
Whether the decision leads to an influx of successful colour mark registrations, however, remains to be seen. Although the requirements under Section 3(1)(a) may be met by colour marks per se, as the Court of Appeal expressly recognised, they will still inevitably present applicants with a “formidable hurdle” when it comes to evidencing acquired distinctiveness under Section 3(1)(b).
This article was written by Harry Jewson.
This article first appeared in WTR Daily, part of World Trademark Review, in July 2022. For further information, please go to www.worldtrademarkreview.com. For queries, please contact a member of our Intellectual Property team.