Securing trademark protection for colours is notoriously difficult, as demonstrated by the recent Court of Appeal ruling in the litigation between Cadbury and Nestlé, concerning the trademark registration of pantone 2685c.
Nestlé v. Cadbury
In 1914, as a tribute to Queen Victoria, whose favourite colour was purple, Cadbury started to use the shade of purple known as pantone 2685c on its packaging, and it has done so ever since. In October 2004 Cadbury applied for trademark protection of this shade of purple for all chocolate goods. In 2008 Nestlé opposed the registration. After three years of proceedings between the parties the case went through to a hearing. Five months later, in December 2011, a final decision was made by the Hearing Officer, who concluded that the colour was capable of being registered. Nestlé subsequently appealed this decision. In May 2012, the High Court ruled in favour of Cadbury but limited the trademark protection to chocolate bars and chocolate drinks. See our previous blog post (Can You Trademark A Colour? Cadbury Secures The Rights To The Colour Purple) for further details. In its ruling of 4 October 2013 the Court of Appeal overturned the decision of the High Court.
Three Court of Appeal Judges found that the trademark lacked “specificity, clarity and precision of visual appearance”, and therefore to allow the trademark to be registered would, they said, “offend against the principle of certainty and the principle of fairness by giving a competitive edge to Cadbury and by putting Nestlé and its competitors at a disadvantage”. The reason for this decision was that the wording Cadbury had used to describe the colour was ambiguous. Cadbury described the colour in its application for trademark protection as: “the colour purple (Pantone 2685c) …. applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods“. It was the use of the word ‘predominant’ within this description that led to the Judges determining that the trademark lacked clarity, as it “opened the door to a multitude of different visual forms”. Cadbury argued that the word ‘predominant’ meant that the colour covered more than 50% of the surface area in question and Sir Timothy Lloyd did suggest that “if Cadbury had spelled this out in their registration it may have been possible to achieve certainty”.
Cadbury have indicated that they may appeal this decision. If they do appeal, the case will most likely be heard by the European Court of Justice. It will certainly be interesting to see what happens next.
It is important to remember that this decision does not mean that Cadbury cannot pursue anyone who now launches a range of chocolate bars and goods packaged within the same or similar shade of purple. They still have the right to bring a passing off claim against anyone who tries to misrepresent their goods as Cadburys.
Trademark protection for colours
To register a trademark, whether it is a word, logo, colour or shape, the applicant must show that the trademark is a sign, can be graphically represented and is capable of being distinguished from other trademarks. As this case demonstrates, it is difficult to secure trademark protection for a colour due to the requirement that the trademark must be graphically represented in a clear and unambiguous manner. Although difficult, it is not impossible to trademark a colour and many companies have managed to do so. For example, Tiffany’s have registered pantone 1837, better known as Tiffany Blue, for boxes, shopping bags and the cover of catalogues, and Heinz have secured trademark protection for the distinctive turquoise colour found on the packaging of its baked beans.
What can we learn?
It is important to ensure that when you register a trademark your application is clear, precise, durable and unambiguous. We must learn from the mistakes made by Cadbury in their application to register pantone 2685c.
Trademark law can be complex, especially if you are trying to register a colour or shape. Professional advice is essential, as trademark lawyers can help draft your application to ensure that it meets the necessary requirements, giving you a better chance of securing trademark protection. This is particularly important with UK trademark applications as the IPO appears to be taking an increasingly tough stance when determining what is and is not capable of registration.