Cadbury's struggle to protect its 'colour purple' per se, at the application stage and post-registration are by now well known.
A decision in one of its cases has also recently resulted in Cadbury voluntarily surrendering two of its UK registered trade marks. This is not quite the end of the story as there are further oppositions against Cadbury's pending applications to register the same mark albeit with slightly different descriptions of the mark itself.
The difficulties faced by Cadbury are an important reminder of the problems of defining the sign that is claimed as the trade mark. The description of the trade mark must be able to confine the mark to a context where it operates as a sign. This is so that the public and the authorities can identify the scope of the protected sign with accuracy.
A trade mark for which registration is sought must be represented in a manner that is clear, precise, self-contained, easily accessible, intelligible, objective, uniform and durable. Cadbury's trade marks were considered not to meet these criteria for registration.
The pictorial representation of Cadbury's 'colour purple' trade mark is below:
The description of the trade mark presented a multitude of signs and made it impossible for the authorities and the public to identify the sign with any precision.
Cadbury's UK application No. 2376879, filed in October 2004, for registration of the 'colour purple' for various chocolate based products, was successfully opposed by Nestle in 2008. This opposition saw multiple rounds of appeals ending in a Court of Appeal decision in 2013. The decision held that the description of the trade mark, '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' was imprecise and liable to cover an unknown number of signs, rather than 'a single sign'.
Amendments to registered trade marks are allowed in fairly limited circumstance. After failing in its attempt to amend the descriptions of its existing registered marks Cadbury voluntarily surrendered them.
In view of the 2013 Court of Appeal judgement, Cadbury attempted to amend the description of its registered 'colour purple' trademark No.2020876A (filed in 1995) from 'The mark consists of 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'.
The Registrar refused to allow Cadbury to amend the description. Cadbury appealed the decision to the Court of Appeal. However, the decision from the Court of Appeal, issued in December 2018, also went against Cadbury. This also prompted Cadbury to voluntarily surrender, in January 2019, its 'colour purple' trade marks No.UK 2020876A, registered since 1995 and also its UK 2360861 registered since 2004.
Interestingly, in 1995 Cadbury had filed the description of the application for registration of the 'colour purple' under No.2020876A as "the mark consists of the colour purple".
In 1997 Cadbury restricted the description of the application to 'The mark consists of 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 pursuance of Guidance issued by the Trade Mark Office. This application was registered in 1998.
In June 2014 Cadbury asked to amend the description of the registered trade mark claiming that the description was in fact as a series of two marks and for Cadbury to be allowed to delete one of the marks in series. The two marks that Cadbury claimed were identified in the series were: (a) the colour purple (Pantone 2685C) applied to the whole visible surface of the packaging of the goods; and (b) the colour purple (Pantone 2685C) being the predominant colour applied to the whole visible surface of the packaging of the goods. Cadbury asked for it to be allowed to delete the description at (b).
Cadbury was refused permission to amend primarily because the 'predominant colour wording' had already been held not to be a definition of a trade mark but to indicate a multitude of trademarks where the mark could appear as 'stripes, spots, a large central blob, or in any other form' all of which could vary considerably from each other. These various types of trade marks could not be considered as forming a series.
Three of Cadbury's UK trade mark applications filed in the second half of 2013 for the 'colour purple' trade mark, have been opposed in 2016 by Nestle. These applications describe the trademark as:
Based on the decisions in the cases so far it would be interesting to see how these oppositions are decided, given that the descriptions of the trade marks in each of the applications is slightly different from the others. The battles are not over yet.
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