The High Court has rejected opposition proceedings brought by Nestle against Cadbury’s application to register a particular shade of purple as a UK trade mark, on the basis of individual distinctiveness. The decision in effect largely upholds the decision made by the Hearing Officer in the original proceedings. (Société des Produits Nestlé SA v Cadbury UK Ltd [2012] EWHC 2637 (Ch), 1 October 2012)

Section 3 of the Trade Marks Act 1994 states that a trademark must not be registered if it does not satisfy the requirements of Section 1 (1) i.e. that there must be a sign which must be capable of being registered geographically and furthermore, the requirements of Section 3 (1) (b) that the mark cannot be registered if devoid of character.

The challenge by Nestle against Cadbury is interesting, because in effect, it is a decision affecting the colour “purple”, and who can claim ownership of this.

In 2004 Cadbury applied to register the colour purple as a trademark in class 30. At the time, the Intellectual Property Office examiner objected to the application because it did not fulfil the requirements of the Trade Mark Act and was devoid of character. Cadbury filed evidence of distinctiveness and it was accepted.

Nestle brought opposition proceedings against Cadbury on various grounds, pursuant to Section 3 of the Trade Mark Act, including bad faith and lack of distinctiveness.

The Intellectual Property Office hearing officer dismissed the opposition and allowed the application to stand, after some amendments.

Nestle appealed to the High Court and the decision has only just been published.

In essence, the Court dismissed Nestle’s appeal and allowed Cadbury’s application to stand, save for agreeing that the mark should only be restricted to milk chocolate.

The Court had to consider in detail previous applications for trademarks which were highly relevant including the previous case of Dyson v Registrar of Trademarks (Case C-321/03). Nestle argued that the Cadbury mark fell foul of Dyson and that it was too narrow. Many factors were considered, before the Court made its decision.

The High Court’s decision in this case, makes it clear that the European Court of Justice’s decision in  Libertel Groep BV v Benelux-Merkenbureau, Case C-104/01, stands i.e. that single colours per se are capable of being signs within Article 2 of the Trade Marks Directive (89/104/EEC). It stated that later ECJ decisions have not changed the effect of this ruling.

Despite extensive arguments by Nestlé, the Judge was not persuaded that the wording which formed part of Cadbury’s mark meant that it should be distinguished from Libertel. He found that the reference to the word “predominant” did not change the mark into a colour combination mark, or make it subjective.

Comments for Businesses

This decision comes on the back of the recent decision in the US allowing Christian Laboutin’s trade mark battle with YSL over his infamous shoes painted with red soles.

Brands may be much more sophisticated now, but this case clearly demonstrates the importance that businesses place on their brands, even down to the colours of their packaging.

Brand loyalty can determine the extent to which a customer uses a product and the value attributed to this. As such, trademark creation, management and protection is critical to any business seeking to obtain brand loyalty and ensure its commercial success.