02 October 2012

Fifty Shades of Purple

The 'Whiskas Purple' colour trade mark dispute has been noted in this blog (here and here) as a point of reference for understanding the Australian 'Cadbury's Purple' litigation, in which chocolate group Cadbury Schweppes sought to restrict competitor Darrell Lea from using a particular shade of purple to identify the favourite food of PhD candidates and intellectual property students. Birss J, in the UK High Court, yesterday reached a sensible decision in a similar dispute between Cadbury and Nestlé over purople as a colour trade mark.

In Société des Produits Nestlé S.A. v Cadbury UK Limited [2012] EWHC 2637 (Ch) the Court rejected claims by Nestlé and found that Cadbury could maintain a specific shade of purple as its trade mark for particular chocolates.
Since single colours per se are, as a matter of European law, capable of being signs within Art. 2 (i.e. they are capable of being a sign, capable of being represented graphically and capable of distinguishing) then, to paraphrase a little the words Cadbury have used in the description of the mark, in my judgment the colour purple (Pantone 2685C) applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of chocolate, is capable of being a sign within Art. 2. The answer to the question I posed at the outset is clear on the basis of the current state of European law. 
Since on the evidence the public associate the colour purple itself with Cadbury's chocolate, Cadbury are entitled to a registered trade mark for that colour on the relevant goods and that is the mark they have applied for.
Cadbury has used purple in some of its packaging for many years, with its Dairy Milk product so branded since 1914. In 2004 it applied for registration of a UK trade mark; the point of application No. 2 376 879 "was to register the colour purple as a trade mark for chocolate". The UK trade mark Examiner objected to the application on the grounds that the trade mark was devoid of distinctive character, distinctiveness being a prerequisite for registration of marks under Australian and UK law. The application was however accepted in May 2008 after Cadbury filed evidence of distinctiveness acquired through use of the mark, ie consumers had over the years come to associate purple with Cadbury's chocolates.

In August 2008 Société des Produits Nestlé, the Swiss-based food giant, opposed the Application. That opposition was considered and in October last year a delegate of the Registrar of Trade Marks found for Cadbury, allowing the application. The finding involved amendment of the specification of goods covered by the mark, ie "Chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate". Nestlé appealed the decision.

The Court noted that
Nestlé does not challenge the important findings that the mark applied for is in fact distinctive (subject to a point on categories of goods). The mark is capable of distinguishing the goods of one entity from those of another. However that does not mean that Cadbury necessarily must win. The main part of Nestlé's appeal is a point of principle. The argument is that the mark applied for is not a sign capable of being represented graphically and as such is not registerable as a trade mark. This point has a number of detailed facets which I will address below. Two secondary points are taken on the specification of goods (on the inclusion of plain chocolate and on the term "chocolate for eating"). Before me Cadbury supports the decision below. It submits the appeal should be dismissed. By its Respondent's Notice Cadbury argues that it would not obtain an unfair competitive advantage by registration of the mark.
Birss J went on to comment that
Before getting into the decided cases it may be noted that the potential problems arising from applications of this kind are not hard to see. Conventional trade marks such as trade names ("Cadbury") or logos (such as a glass and a half of milk on a bar of Cadbury's Dairy Milk) do not give rise to the same conceptual problems as what have been called "exotic" trade marks such as smells, colours per se and other things. The attraction of a trade mark registration is that provided it is used and the fees are paid, it gives a perpetual monopoly. The problem is the same as the attraction but from the other perspective. Unless the registration of trade marks is kept firmly in its proper sphere, it is capable of creating perpetual unjustified monopolies in areas it should not. This is not a new problem. In his judgment in British Sugar v James Robertson [1996] RPC 281, which related to whether the word "treat" was a valid trade mark Jacob J (as he then was) started his judgment with the well known passage from the judgment of Cozens-Hardy MR in 1909:
Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure.
What was said a century ago about the great common of the English language might be said today about the world's great common of the visible electromagnetic spectrum. In that sense the case before me is really very simple. Can Cadbury, even if they have shown that the public associate the colour purple with Cadbury's chocolate, obtain a trade mark registration for that colour per se?
The mark does not give Cadbury ownership of all shades of purple or comprehensive rights regarding the use of purple for anything that is edible. Cadbury will not be confiscating purple jumpers or declaring war on purple prose.