When can a colour be a trade mark?
There has been a further court decision arising from Cadbury’s attempt to register UK trade marks for the colour purple in class 30. In his recent judgment (Société des Produits Nestlé SA v Cadbury UK Ltd), Mr Justice Meade partly allowed the chocolate company’s appeal from a decision of the UK IPO Hearing Officer.
Cadbury had applied for three trade marks at the UK IPO. Nestlé opposed the marks under Section 3(1)(a) of the Trade Marks Act 1994 on the basis that they did not fulfill the requirements of a “sign”. The differences between the marks were solely in the description. (A separate ground of opposition concerning whether the marks had acquired distinctiveness under Section 3(1)(b) has been stayed.)
The judgment provides useful guidance on what should be included in the description when applying for single colour trade marks.
The first application: whole visible surface
The first application included the description: “The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods.”
The Hearing Officer had rejected the opposition against this mark, and Nestlé had not appealed that finding.
The second application: packaging of goods
The second application had the following description: “The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods.” The Hearing Officer upheld the opposition against this mark.
Meade J agreed that the description referred to the application to packaging “without any limitation as to the whole surface, or the predominant part, or in any other way” and that this meant that “the mark was not to a single unchanging colour but would extend to situations where there were other colours”. It therefore lacked specificity and was highly ambiguous.
In fact, said the judge, the formulation in the second application was worse than that rejected by the Court of Appeal in a previous case between the parties (Société des Produits Nestlé S.A. v. Cadbury UK Ltd):
“Removing the wording held by the Court of Appeal to let in multiple forms and to be objectionably ambiguous is cosmetic at best and does not help. It preserves all the practical problems of scope and adds more.”
The third application: Libertel form
The description for the third application was in a form derived from the 2003 Libertel case at the CJEU: “the colour purple (Pantone 2685C), shown on the form of application”.
The Hearing Officer upheld the opposition to this application, essentially because it did not explain how the colour is used as a sign.
However, Meade J disagreed for six reasons:
With a Libertel form mark the sign is the colour per se, no more and no less.
Thus use of the colour is use of the same sign when used on packaging, on business documents, on advertising or indeed on the goods themselves.
Ambiguity/multitude of forms is let in by wording like “predominant” but it is not let in by a sign which is a single colour per se.
The Hearing Officer’s decision effectively would mean that a colour per se mark could only validly be a sign if accompanied by a limitation to a single manner of use such as “the whole surface of the packaging”, which is inconsistent with CJEU case law.
The Hearing Officer’s reasoning was inconsistent as between the second and third applications.
The Hearing Officer’s decision would have the effect that no, or almost no, Libertel form mark would ever be valid.
Less is more?
Summing up, Meade J explained the key difference between the second and third applications. He said the issue with the second application was that “it leaves it significantly, undesirably and unnecessarily unclear whether combination marks including purple and other colours would be within the scope of the right applied for”. But the third application was conceptually just one single thing: the colour purple.