Black and white judgment on the colour purple

20/04/16

Earlier this week judgment was handed down in Cadbury v The Comptroller General of Patents Designs and Trade Marks, Néstlé Intervening. This appeal concerns Cadbury’s attempt to save the validity of a trade mark registered for the colour purple.

The description of the mark as registered was that “The mark consists of the colour purple (Pantone 2685C) as shown on the form of 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’rsquo;s request was made following the Court of Appeal’s decision in Société Des Produits Nestlé S.A. v Cadbury UK Ltd [2013] EWCA Civ 1174 that a mark with the same description could not be registered because it offended against the requirements of Article 2 of the Trade Marks Directive. The description of the mark was held by the Court of Appeal to encompass a large but unknown number of signs merely sharing the common characteristic that purple was the predominant colour applied to the whole visible surface of the packaging.

In order to prevent a subsequent invalidity attack being made on this trade mark, Cadbury sought to delete the expression ‘or being the predominant colour applied to the whole visible surface’ from the description of the mark. Cadbury argued that this could be done on the basis that its trade mark was in fact a series of trade marks.

The judge upheld the decision not to permit the requested deletion. He noted that the Court of Appeal in the earlier decision had not suggested that the trade mark was either to be understood as two marks, or as a series of marks. Instead, Sir John Mummery had held that the alternative description prevented the registration of the trade mark because it encompassed an unknown number of signs. Further, the judge held that the criteria for the grant of a series of trade marks in section 41 of the Trade Mark Act 1994 were not satisfied by the fact that the signs encompassed by the wide alternative description share the common characteristic of purple being the predominant colour applied to the visible surface.  In the circumstances Cadbury’s appeal was dismissed.

The judgment is here.