South Africa: The Colour Purple: The Sequel

Last Updated: 20 November 2013
Article by Gaelyn Scott

Most Read Contributor in South Africa, September 2016

I've written on colour trade marks before. Being the attorney who successfully acted against Cadbury some years ago and prevented the registration of the colour purple as a trade mark in South Africa, I have followed these issues very closely and that particular trade mark application around the world. One issue that certainly caught the public's attention was Christian Louboutin's attempt to monopolise the colour red for shoes – a US appeals court finally ruled that Louboutin's US trade mark registration for red-soled shoes was valid, but that it was limited to shoes that have a red sole which contrasts with the rest of the shoe. As such, the registration did not stop rivals selling all-red shoes.  The other big story was the battle between Cadbury and Nestle regarding the colour purple. What happened here was that Cadbury applied to register the colour purple as a trade mark in the UK for chocolate products, and Nestle opposed that application.

Cadbury's  UK trade mark application  was filed  way back in 2004 and it was quite specific – it  comprised a swatch which was identified as Pantone 2685C, together with  the statement  that the colour was  'applied to the  whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods'.  Nestle's objection was that the words 'predominant colour' created vagueness and uncertainty, and that they allowed for alternatives. 

The UK High Court, however,  felt that the application was fine, noting that colour registrations  have been accepted by the highest court in Europe - a famous  example would be the colour orange for champagne which belongs to the makers of Veuve Clicquot.  The UK court's reasoning was controversial – it accepted that the wording might create some vagueness and uncertainty, but said that this was a feature of all trade marks of this nature.  In fact, it was apparently even argued at the hearing that all trade marks involve a degree of vagueness and uncertainty, and that in the case of a word trade mark this results from the fact that the registration might cover all colours and fonts.

Not surprisingly, Nestle filed an appeal. The Court of Appeal handed down its judgment recently, see Société Des Produits Nestlé S.A. v Cadbury UK Ltd (2013) EWCA Civ 117. Once again the issue was simply whether the trade mark was sufficiently well defined, and whether it was - to use the terminology of European trade mark law - a 'sign' which was 'capable of being represented graphically'. The issue that normally comes up in cases like this - which is whether the trade mark has been used sufficiently in order for it to have become distinctive of one company's product - was never going to arise here. That's because Cadbury has been using the colour purple for close on a century. 

The leading European case on the issue of colour trade marks is the case of Libertel, where the court held that a single colour can be registered provided that it can be  'represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective'. As a result of this and other decisions, it's become common for companies who want to register colour to file a sample of the colour, to specify the Pantone number, and possibly also provide a written description of the trade mark.

Once again Nestle argued that the words 'predominant colour 'were problematic, potentially conjuring up any number of trade marks. This, said Nestle, was not an application to register a trade mark, but rather any number of trade marks. This time the court agreed. It said this:   'Cadbury's formulation does not comply with the requirements for registration.'  It went on to say that the trade mark lacked 'the required clarity, precision, self-containment, durability and objectivity to qualify for registration'. The Court of Appeal felt that the wording did, indeed, cover multiple trade marks because of the implied reference to other colours. It said this: 'To allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. It would also offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage.' It reminded us what was at stake: 'As the registration of a trademark creates a form of intellectual property conferring a potentially perpetual monopoly in the mark and excluding everybody else from use in various ways, the point of principle has some public importance.'

Cadbury's response was predictable, but also telling. It said this: 'We are disappointed by this latest decision but it's important to point out that it does not affect our long held right to protect our distinctive colour purple from others seeking to pass off their products as Cadbury chocolate...Our colour purple has been linked with Cadbury for a century and the British public has grown up understanding its link with our chocolate. We are studying this particular ruling and will consider our next steps which includes the possibility of an appeal.' So yes, Cadbury might file a further appeal to the Supreme Court (formerly House of Lords). But irrespective of the final outcome,  the company will certainly go after anyone who tries to cause confusion by using a similar colour in relation to chocolate - Cadbury has, of course, built up considerable common law rights to the colour purple, which means that it can sue for passing-off even it doesn't have a trade mark registration.

It's important to note that Cadbury's application failed on what was really a technicality – the trade mark hadn't been sufficiently well defined. The judgment is by no means the death knell for colour trade marks.  On the very same day that the Court of Appeal handed down its judgment in the Cadbury case, it also handed down its judgment in a matter involving Scrabble tiles. In that case the owner of the trade mark Scrabble, Mattel, had applied to register the Scrabble tile as a trade mark. What Mattel filed was a blank ivory-coloured Scrabble tile together with the words 'on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10.'  Once again, the court said that this was too vague and that it potentially covered more than one trade mark.   A further clear warning that precision is required!

Registration for unusual trade marks like colour remains an option. It just has to be done right!

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.