Following a High Court challenge from Nestle against Cadbury’s Trademark Registration for the colour purple, this decision reiterates the requirements for colours to be registerable as Trademarks. The outcome ensures that Cadbury can only claim exclusive rights in the colour purple for milk chocolate packaging, the goods in relation to which the colour has become sufficiently distinctive and well-known. The colour remains available for others to use in the marketplace for different goods or services.
Cadbury has battled for several years to extend their registered protection in the UK for the colour purple (previously registered for very specific goods) but at every turn, their endeavour has been challenged by Nestle on the grounds that registration would afford unjustly broad rights to a single party, foreclosing a highly competitive market to others. In addition, Nestle argued that Cadbury’s Trademark, being a colour, was not capable of fulfilling the requirement for registration of “graphical representation”.
The High Court’s decision can be considered a victory for both parties. On the one hand, Cadbury has successfully secured proprietary rights, albeit for a more limited list of goods, namely, packaging for “milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate [and] preparations for making drinking chocolate”, but on the other hand, the colour has not been monopolized and remains in the public domain for others to use legitimately upon goods, not of milk chocolate origin.
The decision confirms that colours are registerable as Trademarks but in order to be so, their manner of use must be defined precisely and unambiguously, using a Pantone colour reference, along with a list of the specific goods of interest. Moreover, when assessing evidence of use in support of the registration of a single colour, the Registrar or Court will adopt a focussed assessment of the exact goods in relation to which the evidence has been supplied and will not extend rights to other goods, in respect of which the required public recognition cannot be shown.
In sum, Nestle v Cadbury has shed light on the European Court of Justice’s approach in Libertel Groep v Benelux Merkenbureau (case C-104/01), where it was held that a single colour is capable of functioning as a Trademark, provided that the criteria laid down by Sieckmann was satisfied and that the Trademark was capable of being deemed “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.
If you have a Trademark, both conventional, such as those comprising words, acronyms or logos, or indeed, a less conventional one, seek the advice of experienced Trademark attorneys and talk to the team at Albright IP.
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