In Cadbury Ltd (The Colour Purple) BL 0-358-11 20 October 2011, the UK Intellectual Property Office has dismissed an opposition brought by Nestlé against Cadbury’s application to register a particular shade of purple as a UK trade mark for chocolate, on the basis that Cadbury would limit its specification of goods to those for which the mark had acquired distinctiveness.

BACKGROUND

In 2004, Cadbury applied to register as a UK trade mark for goods in Class 30 corresponding to chocolate-based products:

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.

Société des Produits Nestlé SA (Nestlé) opposed the application based on grounds arising under Section 3 of the Trade Marks Act 1994, including bad faith and lack of distinctiveness among others.

DECISION

Colour as a Sign

The Hearing Officer held that the colour was fixed and stable, and capable of being used as sign since it was represented by an internationally recognised identification code and satisfied the factors outlined in Sieckmann [2002] C-273/00 ECR I-11737.

The Hearing Officer found that the sample of the colour, accompanied by the Pantone reference, clearly satisfied the requirements set out in Libertel Groep BV and Benelux-Merkenbureau [2004] C-104/01 FSR 4 with regard to graphical representation, and that the addition of the verbal description made the representation of the mark clear, precise, self-contained, easily accessible, intelligible, and objective, and thus capable of being used as a sign.

Bad Faith

The claim as to bad faith was limited to the argument that Cadbury did not actually intend to use the colour on the whole visible surface of any packaging. The judge dismissed this argument on the basis that it would be acceptable commercial behaviour to assume that the “entire surface” of packaging would mean everything except the product name itself, which might well be written in a different colour.

Distinctive Character

Cadbury accepted that, prima facie, the mark was not distinctive under Section 3(1)(b) but contended that it had acquired distinctiveness through use by the date of the application. Applying the principles governing the assessment of acquired distinctiveness in Libertel and in joined cases C-108 and C-109/97 Windsurfing Chiemsee [1999] ECR 1-2779, the Hearing Officer said that the underlying general interest in not unreasonably restricting competitors’ access to the colour in question was to be considered by establishing whether the colour was distinctive of the company, and of all the goods specified in the application.

Cadbury’s purple was not utilised in all instances, and the use was mainly in relation to biscuits and “cross-over” products as opposed to chocolate. Further, owing to heavy branding in the decade before the application was filed, the evidence showed that the public had come to strongly associate the shade in question with Cadbury even before the relevant date. This was confirmed by several surveys in which nearly half of the respondents demonstrated a substantial degree of association between the shade of purple and Cadbury, especially in relation to chocolate.

The evidence showed that the mark had acquired distinctiveness in relation to chocolate per se—chocolate in bar and tablet form, and drinking chocolate—but the distinctiveness had been blurred in relation to other goods, including chocolate assortments, confectionery, and cakes, owing to Cadbury’s use of other colours for the packaging of such products. The Hearing Officer therefore dismissed Nestlé’s opposition insofar as it was directed to the former group of goods, but allowed it for the latter group of goods, and required Cadbury to amend its specification to reflect this.