Cadbury’s monopoly over the purple colour that wraps its chocolate bars has been undermined as the confectionery giant has been forced to abandon its trade mark.

Background

The original colour mark was registered in 1995. In 2004, Cadbury applied to the Registrar of Trade Marks for the registration of another similar mark. This application was initially refused before being granted in 2008. The Registrar described the mark as follows:

“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.”

In 2012, Nestlé, one of Cadbury’s main competitors, appealed to the High Court against the registration. The High Court affirmed the Registrar’s final decision and Nestlé appeal to the Court of Appeal.

In Société Des Produits Nestlé S.A v Cadbury UK Ltd [2013] EWCA Civ 1174, the Court of Appeal ruled in favour of Nestlé. It held that the description of the mark failed to satisfy two of the requirements of section 3(1)(a) of the Trade Marks Act 1994, namely that it be “a sign” and that it be “capable of graphical representation”.

Cadbury’s case was undermined by one word: “predominantly”. Sir John Mummery at [55] explained “[t]here is wrapped up in the verbal description of the mark an unknown number of signs” such that it is not a sign. It is for this reason that it could not be a graphic representation of “a sign” and it “lacks the required clarity, precision, self-containment, durability and objectivity to qualify for registration”.

The Present Case

Cadbury had a problem: the 1995 mark shared the same unclear, imprecise and description.

Pre-empting legal attacks on the 1995 mark’s validity, Cadbury applied to the Registrar of Trade Marks to have the following words deleted from the mark, “, or being the predominant colour applied to the whole visible surface” so that the mark would only apply to wrappers entirely and solely coloured with the purple colour.

They argued that the offending description actually described two separate marks. One, they said which refers to the colour covering the whole visible surface of the wrapper and the other, to wrappers which are predominantly covered by the colour. They requested that the second mark be deleted under section 41 of the Trades Mark Act. The Hearing Officer at the Registrar of Trade Marks disagreed and refused the application to delete.

On appeal at the High Court, Cadbury argued that not recognising the description as comprising two marks was a material error. Nestlé, intervening, argued that Cadbury had not initially seen the description as describing two marks and to do so post-registration offends the provisions of the Trade Marks Act that try to prevent a series of marks being registered by the back-door.

Ultimately, the question of whether the Registrar had erred turned on a construction of Sir John Mummery’s ruling in the 2013 case. The High Court decided at [30] that it is wrong to suggest that “[Sir John] is coming close to suggesting that the description is of two marks or of a series of marks”.

On appeal, the Court of Appeal reiterated that a series of trade marks was a bundle of trade marks under a single reference number, not a single mark comprised of a number of signs(as set out in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 455).

It then parsed the 1995 mark’s description to establish its ordinary meaning. The Court found that the description referred “to every conceivable case where purple is the predominant colour, including, for the avoidance of doubt, the case where no other colour is visible”. The mark was one and indivisible and Cadbury had lost.

Effects of the Decision

Cadbury abandoned the 1995 mark in February 2019. Having failed to amend it, it was a matter of time before it went the same way as the 2008 mark. Abandonment was damage limitation, but not necessarily defeat.

Cadbury’s US owner Mondelez have said they “will continue to protect what we believe is a distinctive trademark“. One way they could do this is to claim unregistered trademark rights. These common law rights protect customers from being confused by firms that deliberately make products that look similar to established brands. This is known as “passing off” and requires proof of the following:

  1. That the mark belongs to Cadbury;
  2. Proof that that Cadbury have built up the goodwill around the mark; and
  3. That Cadbury have been harmed by the other person’s use of the mark.

Cadbury has been put in a difficult position due to its original registration and had it realised the specification’s ambiguity and immediately requested its amendment, but this was denied. This shows just how critical descriptive precision is to a trade mark’s survival. The Court of Appeal, in its 2018 judgment, stressed that “[i]t must be for the applicant to state clearly the type of monopoly for which he contends.

This is just the most recent of clashes between confectionary giants Cadbury and Nestlé. In August 2018, Nestlé lost a 10-year-long battle against Cadbury to try and gain an EU-wide trade mark for the KitKat’s “four trapezoidal bars aligned on a rectangular base”. You can read about that story on IP Harbour, here.