UK court dismisses Cadbury purple TM case
A UK appeals court has dismissed a case filed by Cadbury in the company’s effort to alter its trademark for the colour purple.
The confectionery brand sought to amend the registration of its trademark (UK number 2020876A) for the colour purple “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging” of its chocolate bars.
Cadbury asked the UK Intellectual Property Office (IPO) to delete the second half of the description to limit the ‘876 registration to the colour purple “applied to the whole visible surface of the packaging”.
In 2013, Cadbury lost a long-running battle with Nestlé when the English Court of Appeal invalidated the company’s trademark number 2376879 on the basis that the mark was not specific enough. The language of this trademark description read identically to that of the ‘876 mark, so Cadbury tried to alter the ‘876 description.
But the English Court of Appeal dismissed Cadbury’s appeal yesterday, December 5.
Cadbury first applied to alter the description of the ‘876 mark, but in 2015 the IPO denied the request on the basis that because the brand had not applied for a series of marks, a part of the description could not be deleted.
Cadbury appealed against this decision and its argument was heard in the English High Court in 2016 by judge John Baldwin QC, who upheld the IPO’s decision.
Again, Cadbury appealed and the case was heard by the Court of Appeal.
In its comments to the Court of Appeal, the IPO argued that upon application for the mark, Cadbury did not indicate that it was applying for a series of trademarks.
The IPO said that “Cadbury’s application was therefore not an application to register a series and should not now be treated as if it had been”, adding that the second half of the description should not be deleted.
Lord Justice Floyd, who delivered yesterday’s ruling, supported this. He said that “the registration could not possibly satisfy the requirements for a series of marks”.
Additionally, he said that the registration of the ‘876 mark “falls foul of the requirements of clarity and precision”.
Lord Justice Henderson and Lord Justice Baker agreed with Floyd’s decision.
According to trademark law, when applying to register unusual marks such as colours, the description must be clear and precise so that a third party viewing the register can see what the mark is and what it protects.
Alex Borthwick, of counsel at IP law firm Powell Gilbert in London, said the ambiguity of Cadbury’s trademark probably influenced the court’s decision.
Borthwick said: “The sole condition that purple is the predominant colour covers a very wide range of marks, many of which would not resemble each other or have substantially the same visual identity. This was one of the Court of Appeal’s objections and is a powerful reason why it reached its result.”
Sharon Daboul, chartered trade mark attorney at law firm Harbottle & Lewis, said the latest blow for Cadbury leaves its oldest UK colour registration in a vulnerable position.
“Following the decision, there’s a risk that Cadbury’s purple trademark will not be found to be sufficiently precise as the description could indicate that more than one sign is covered by the mark.
“Competitors such as Nestlé may now be considering their options in terms of cancelling the registration altogether.”
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