Feb 7, 2019

Start wearing purple wearing purple…

So sang Gogol Bordello in their gypsy punk hit in 2006. It was the band's breakthrough track and they have sadly failed to stay in the mainstream ever since. Cadbury, however, fear that competitors may indeed start wearing purple following its abandonment of a trademark.

Cadbury has duelled with Nestlé and a plethora of other confectioners for years over the validity and enforceability of its trademark for the particular purple that has, it claims, become synonymous with its brand: otherwise known as "Pantone 2865c". The problematic part of its trademark was the word "predominantly". Whether the colour is the predominant feature is highly subjective and would make enforcement of the trademark both difficult, expensive, and risky. If Cadbury was restricted to only enforcing its rights against an infringer using the same purple on the entirety of the packaging of a bar of chocolate, then it would be very easy for would-be infringers to add a small splash of another colour to defeat any claim.

Cadbury has therefore dropped one trademark (from 1995) and will seek to rely instead on either its highly similar 2004 trademark (which, given the similar wording may run up against similar problems) or its unregistered rights.

It is in its unregistered rights that Cadbury clearly thinks it has strong protection. Unregistered trademark rights are pursued in a claim for passing off. In order to be successful in such a claim (in summary) Cadbury would have to show that it has a reputation in its colour purple, that an infringer was using that colour purple, and that the infringer's use was calculated to confuse the public in to a mistaken belief that the infringer was in some way linked to Cadbury.

While it is generally easier to rely on registered rights, given Cadbury's vast reputation and historic market dominance, it may very well be easier for it to rely on the holistic approach in passing off, rather than the more technical and disputed rights in a registered trademark.

Whether we see new chocolates wearing purple in the coming months remains to be seen, but discount retailers will no doubt be keeping a keen eye on any changes in Cadbury's enforcement strategy, not wanting to miss any opportunity to expand their own brand ranges.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.

in: EU/International, Trade Marks

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