Cadbury Left Feeling Purple in Trademark Ruling

We have previously covered recent case law the long-running legal battles between Nestle and Cadbury. Our article on Cadbury's successful opposition to Nestlé's application for a trademark for its four finger three dimensional shape of the KitKat bar can be accessed here.

In the instant case, Cadbury has failed in its attempt protect its UK colour purple trade mark applicable to chocolate bar wrappers.

Background

The purple trademark was first registered by Cadbury in the UK in 1995 ("1995 Mark").  Cadbury subsequently sought to alter the mark in an attempt to protect the mark from invalidity attacks, following Nestlé's successful objection to a similar mark in 2013.

In that case, the Court of Appeal held that the mark had not been validly registered as it was for the colour purple applied to the whole surface of a wrapper and also the colour purple being the predominant colour applied to the whole visible surface. This meant that within the description there was a whole number of possible marks which rendered it invalid.

The 1995 Mark was registered for the same purposes and to prevent the same invalidity argument being applied to the 1995 Mark, Cadbury applied to alter the mark.  However, this is prohibited by section 44 of the Trade Marks Act 1994 ("1994 Act"). In an attempt to circumvent this prohibition Cadbury argued that the 1995 Mark was a series mark with two separate marks, one being the whole surface as the colour purple and one for purple being the predominant colour on the surface. Cadbury sought to exclude the second of these, which was the registration it felt most vulnerable to revocation, to leave a single validly registered mark.

Decisions of the Registrar and High Court

Cadbury's application was refused on the grounds that the 1995 Mark was not originally registered as a series mark and so could not be treated as such now and so any deletion of part of the mark would fall foul of section 44 of the 1994 Act. Cadbury appealed the decision to the High Court which agreed with the Registrar and dismissed the appeal.

Conclusion

This is an interesting case to consider as the issue of colour as a trade mark is a complex area of trademark law which is very topical. The case illustrates the dangers applicants' face of seeking to register a colour mark.

If this article raises any issues for you please do not hesitate to contact the team at McDaniel and Co on 0191 281 4000 or by email to legal@mcdanielslaw.com