IP Cases & Articles

Another loss for Cadbury in purple trade mark battle

This is yet another episode in the Nestlé v Cadbury trade mark conflict series (see “related articles” right and below). In 2013, Cadbury UK Limited filed three new UK applications for the below colour mark with varying descriptions.

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  1. Application No 3019362: The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods.
  2. Application No 3019361: The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods.
  3. Application No 3025822: The colour purple (Pantone 2685C), shown on the form of application.

The applications were all accepted for “milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate” in class 30.

However, the marks were then opposed by Société des Produits Nestlé SA under section 3(1)(a) on the basis that reference to a Pantone number was insufficient and that the description in each case was not intelligible or was ambiguous.

Nestlé also opposed under section 3(1)(b) but this ground was suspended whilst section 3(1)(a) was considered.

The first application was accepted; disagreeing with Nestlé, the hearing officer concluded that the screenshot of the Public Register, which a person can easily access online, does indeed show the mark applied for, together with a representation of the colour and the description, and that this information is accessible.

It was also confirmed that use of a Pantone number is sufficient to identify the colour.

It is particularly useful to refer to a recognised colour code as this will ensure that a specific colour is understood even though the media of display of the mark could affect the colour and appearance of it.

The whole visible surface

In the 2013 judgment, there had been an issue with the word “predominant” and it was suggested that the position could be clarified with reference to “the whole visible surface”.

The hearing officer understood from this decision that reference to the “whole visible surface of the packaging of the goods” is clear and precise. The mark is not ambiguous in that it could refer to a number of different signs; case law has already established that a colour may be registered in the abstract.

The oppositions were successful against the other two applications, both of which were considered imprecise and ambiguous.

Application no. 3019362 will now be considered in relation to the opposition filed under section 3(1)(b). Watch this space!

Related article

Cadbury fails to safeguard UK purple TM registration, 09 January 2019.

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