High Court rules Cadbury’s purple trade mark is not a series mark

TMThe judgment in the case of Cadbury UK Ltd v The Comptroller General of Patents Designs and Trade Marks [2016] EWHC 796 (Ch), 18 April 2016 has been published, in which Cadbury’s appeal against a decision of the UK Intellectual Property Office was dismissed by the High Court. The decision marks the latest in a line of cases which have passed through the senior courts in relation to the shade of purple used in Cadbury’s Dairy Milk line of chocolate, namely Pantone 2685C.

Cadbury and market rival Nestlé were previously engaged in a legal battle after the UK Intellectual Property Office’s decision to reject Nestlé’s opposition against Cadbury’s application to register the colour purple as a trade mark. This decision was upheld by the High Court but subsequently overturned in the Court of Appeal.

The latest claim relates to the colour purple, with the mark being described as follows:

The colour purple… applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.The mark consists of the colour purple (Pantone 2685C)… applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.

Following the Court of Appeal’s judgment in Société Des Produits Nestlé S.A v Cadbury UK Ltd [2013] EWCA Civ 1174, Cadbury sought to have the description of its mark interpreted as two marks within a series and to have the second mark in the series (if the mark could indeed be interpreted as such) deleted. The judgment of the Court of Appeal raised the point of whether Cadbury’s mark could be interpreted as a sign within the meaning of section 1 of the Trade Marks Act 1994, so as to give rise to the possibility of an application being filed for invalidation under section 3 of the Act.

In an effort to prevent the possibility of such an attack against its mark, Cadbury attempted to have the mark interpreted as a series mark pursuant to section 41 of the Act so that the more general description could be deleted, thereby leaving the more specific phrase intact and defending against any subsequent application for invalidity. Mr John Baldwin QC, sitting as a Judge of the Chancery Division, held that the registration was not a series mark within the meaning of section 41 of the Act.

He drew upon the judgment of the Court of Appeal and in particular the judgment of Sir John Mummery, stating that the description accompanying the mark was “of an unknown number of signs including not just the colour purple but other in which the colour purple predominates. I do not think [Sir John] is coming close to suggesting that the description is of two marks or of a series of marks”.

The judge accordingly upheld the hearing officer’s decision and dismissed Cadbury’s appeal.

Conclusions

This case, together with the previous Cadbury litigation, underlines the importance of ensuring trade marks are clearly and precisely defined. This is particularly important in the case of unusual trade marks, such as applications for colours as trade marks. Cadbury’s difficulties, together with the high threshold for registration of colours as trade marks, are by no means a thing of the past, with Tiffany having successfully registered Pantone 1837. This case highlights the need for precision and shows that trade mark law is constantly evolving as new strategies emerge which depart from traditional methods of protecting brand identity.

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