South Africa: The Colour Purple: The Sequel

Last Updated: 20 November 2013
Article by Gaelyn Scott

Most Read Contributor in South Africa, September 2018

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.

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