Sweet Success - Cadbury Registers Purple Colour in UK
Following an opposition from Nestlé, Cadbury has been successful in registering the colour purple, in relation to a range of chocolate products.
The application sought protection for “The colour purple (Pantone 2685C), as shown in the form of the application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”.
Cadbury’s application had been accepted during examination on the basis of acquired distinctiveness through use, following evidence of use dating back to 1914. However, Nestlé opposed the application claiming that:
- The mark is not capable of distinguishing the goods of one undertaking from those others within the meaning of Section 3(1)(a) because it is a single colour, and the colour is commonly used in trade;
- Because the mark could take numerous forms of appearance, it is not a ‘sign’ within the meaning of the Act;
- The sign is not capable of being graphically represented as required by Section 3(1)(a);
- The mark is excluded from registration under Section 3(1)(b), (c) and (d) because: a) it is devoid of distinctive character; b) it designates a characteristic of the goods, namely the characteristic of having purple packaging; c) it was customary in the current language or bona fide practices of the trade, the colour purple being in common use at the date of the application in relation to the specified goods; d) it had not acquired a distinctive character through use.
- To the extent that the mark covers the colour specified “applied to the whole visible surface of the goods”, the application was made in bad faith contrary to Section 3(6) because the mark was not so used, and the applicant had no intention to use it like this.
- It was inconceivable that the applicant intended to use the mark in relation to the broad range of goods specified in the application, and the applicant must have known of third party use of purple, so the bad faith applies here too.
The Hearing Officer referred to the decisions of Libertel and Windsurfing Chiemsee when making his decision and said that it was clear that colour can constitute a sign but cannot be presumed to do so. The evidence that Cadbury filed in support of its application was strong and despite evidence of third party use of the colour purple on chocolate items, the Hearing Officer said that “although it is not sufficient simply to be the best known user of a particular colour, there is no requirement in law to be the only user of a sign before it can be considered distinctive”.
Similarly the challenge on the grounds of bad faith was rejected because the description of the mark could not be applied literally and the Hearing Officer was satisfied that there was no prima facie case of bad faith for Cadbury to answer.
The decision did not all go Cadbury’s way, however, as the Hearing Officer limited his specification to the specific goods he considered had acquired distinctiveness through use. Namely: ‘chocolate in bar and tablet form; eating chocolate; drinking chocolate; preparations for making drinking chocolate’.
He has invited the parties to comment on the appropriateness of the wording of the new specification, not on the substance of his decision. Accordingly, the decision has yet to become final.
The Hearing Officer’s conclusions reinforce the difficulties faced when trying to obtain monopoly rights in colour trade marks. Not only do applicants have to show acquired distinctiveness through use, but the scope of protection will also be strictly interpreted and may even be taken out of their hands.