UK: Nestlé v Cadbury: Registering A Colour As A Trademark

Société des Produits Nestlé SA v Cadbury UK Limited [2013] EWCA Civ

On 4 October 2013 the Court of Appeal decision in Nestlé's challenge to Cadbury's registration of a shade of purple as a trademark for their chocolate products gave careful consideration to the application of Article 2 of the Trade Marks Directive 2008/95/EC.

Registration of Trademarks – overview

The registration of trademarks in the UK is governed by the Trade Marks Act 1994 and the Trade Marks Directive 2008/95/EC which was enacted with the aim of harmonising the laws relating to trademarks in European Union member states in order to assist the free movement of goods and services within the internal market.

Article 2 of the Trade Marks Directive 2008/95/EC states that in order for an application to register a trademark to be accepted, the proposed trademark must:

Pursuant to Article 3 signs which do not meet the above criteria or are devoid of distinctive character shall not be registered.

Case Background

In 2004 Cadbury successfully applied to register the shade of purple known as Pantone 2685C as a trademark in relation to goods which fall under the Intellectual Property Office's class 30. Their application for the registration stated that the trademark would be the colour "applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods."

Nestlé opposed the registration on the grounds that the colour was not capable of being represented graphically and therefore did not comply with Article 2 of the Trade Marks Directive 2008/95/EC.

Outcome

Following an Intellectual Property Office hearing and a High Court decision which allowed the trademark to remain registered, the Court of Appeal finally found in Nestlé's favour on 4 October 2013.

Sir John Mummery gave the principal judgment and considered key decisions of the European Court of Justice when presenting his findings and analysing the Article 2 requirements in relation to this case.

He was clear that a single colour is capable in certain circumstances of being a sign under the first requirement of Article 2 and referred to the CJEU ruling in Libertel Groep BV v Benelux-Merkenbureau (C-104/01) [2004] Ch. 83 which demonstrated as much.

However, it was decided that Libertel should be distinguished in this case due to the wording of Cadbury's application. It was held that the fact that the registration was to include goods where Pantone 2685C featured as "the predominant colour" on the packaging implied that it may also include goods on which there are many other unknown colours or signs on the packaging as well. The registration would therefore cover multiple signs which had not been graphically represented or described on the application form.

Sir John Mummery came to the conclusion therefore that the trademark applied for "lacks the required clarity, precision, self-containment, durability and objectivity to qualify for registration" as it would offend the principles of certainty and fairness.

An appeal against a challenge to the trademark of a SCRABBLE tile was heard at the same time as the Cadbury appeal (J W Spear and Sons Ltd and others v Zynga Inc [2013] EWCA Civ 1175, 4 October 2013). It was held that the application to register the SCRABBLE tile did not comply with the Article 2 requirements. This was principally due to the fact that the application was worded in such a way as to allow many different combinations of the various elements of the trademark to produce varying signs, and that as with Cadbury's application there was therefore insufficient clarity and precision to constitute a registered trademark.

A reference to the CJEU was not made in these appeals as the Court of Appeal considered it unnecessary given the number of previous CJEU decisions on the subject which they had to rely on.

Impact

Previous guidance from the Office of Fair Trading suggested that the wording given in the trademark description by Cadbury would be adequate. The decision therefore has a strong impact on the future drafting of trademark applications. The idea of the relevant colour being "predominant" on the packaging was considered too vague. However, Sir Timothy Lloyd's judgment suggested that an application which stated that the colour was applied to "more than 50% of the area of the visible surface" of the packaging might have been sufficiently narrow.

Practitioners will have to be clearer when defining their trademarks to ensure that no interpretation of their drafting could include additional signs. They should also take care not to allow any ambiguity to creep into their trademark descriptions, as these are, following this judgment, likely to be rejected.

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