Cadbury today lost their appeal to trademark the color purple. The case concerns Cadbury’s registered UK trademark for the color purple, which states  “The mark consists of the color purple (Pantone 2685C) as shown on the form of application, applied to the whole visible surface, or being the predominant color applied to the whole visible surface, of the packaging of the goods.”, registered in respect of chocolate bars/tablets. However, Cadbury sought to delete the part of the description concerning purple “being the predominant color applied to the whole visible surface”, following a finding of the Court of Appeal in Nestlé v Cadbury in 2013 that Cadbury’s application for another UK trademark with the same description should be rejected.

The Hearing Officer for the Registrar of Trade Marks and the High Court refused Cadbury’s request to make the deletion. Cadbury appealed and, in its decision handed down today, the Court of Appeal dismissed Cadbury’s appeal. The opposition ultimately succeeded because the Court of Appeal felt that the description didn’t adequately define the mark. This was primarily because the wording “being the predominant color applied to the whole visible surface” is too broad.

Sharon Daboul, Chartered Trade Mark Attorney at law firm Harbottle & Lewis, said: “This is the latest decision in a long-running battle between Cadbury and Nestlé over the registration of non-traditional trademarks. Whilst today’s judgment comes as no surprise, it will be a blow for Cadbury with its oldest UK color registration now being vulnerable.”

Cadbury presumably realized that this meant their existing UK registration was potentially invalidly registered, so they came up with quite a creative way to try and get around this. They claimed that the existing UK registration was actually for a series of two different marks: 1) the colour purple (Pantone 2685C) applied to the whole visible surface of the packaging of the goods, and 2) the color purple (Pantone 2685C) being the predominant color applied to the whole visible surface of the packaging of the goods.  If this argument was accepted, it would allow them to delete the problematic second mark.

Rebecca Anderson-Smith, Trade Mark Attorney at Mewburn Ellis, comments: “Although seemingly about an administrative point, this decision is a significant blow to Cadbury, as it means the wording ‘being the predominant color applied to the whole visible surface’, previously considered too broad by the Court of Appeal, has to remain in their registration. This leaves the registration open to attack by Nestle and other third parties for being invalidly registered.”

Alex Borthwick, Of Counsel at IP law firm Powell Gilbert, commented: “Through its contention that its registration was to a “series of marks”, as opposed to a single mark, Cadbury ran a creative argument. If successful, Cadbury would have been able to excise the offending part of the description since owners of series of marks could delete a mark in the series.”

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