Legal Updates

Intellectual Property - Trade marks – Colour marks

A recent decision in favour of Cadbury broadened its trade mark rights with regards to protecting its use of the colour purple for its chocolate.

Background

Prior to this Cadbury was the owner of a relatively narrow colour trade mark for a specific shade of purple (Pantone 2685C) covering chocolates in bar or tablet form.

Cadbury recently sought to expand its mark for application to a broader range of chocolate and cocoa-based products including confectionary, beverages, chocolate assortments and cakes. The UK Registry allowed the application due to the fact that the evidence provided demonstrated distinctiveness that had been acquired through extensive use.

Trade Mark Requirements

The basic requirements of a trade mark are:

• The mark must be a sign;
• The sign must be capable of being represented graphically; and
• The sign must be capable of distinguishing the goods or services of one person from those of another person.

Opposition

The expansion of this mark was rigorously opposed by Nestlé, which based its appeal on the ground that the mark was not a “sign capable of being represented graphically”.

Appeal

·        Nestlé relied on numerous EU case law despite the fact that the leading case suggested that, depending on the context in which it is used, a colour mark is capable of being registered.

·        The Court considered Cadbury's definition and nature of use to be acceptable and the appeal dismissed.

·        However, the Court did deem the range of products covered to be too wide and so limited the expanded colour mark to apply to "milk chocolate in bar and tablet form, milk chocolate for eating; drinking chocolate; and preparations for making drinking chocolate."

What does this decision mean?

While Cadbury’s success demonstrates that the law is willing to broaden the limits of trade mark law, it had to demonstrate a high level of public recognition to achieve its result. Public recognition is an elemental factor in being able to distinguish goods or services from those of other competing companies and must be considered when filing for a trade mark.

© RT COOPERS, 2012. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.