Simon Bennett and Rachel Cook Fox Williams LLP

Chocolate giants Nestle and Cadbury have been trading blows in the UK and European Courts for several years. This latest round in front of the UK Court of Appeal related to Cadbury’s application to register the color purple (to be specific Pantone 2685C) for the packaging of specified products, including chocolate in bar and tablet form. Cadbury has been using purple for its packaging since 1914 and the UK trade mark registry had, in granting the application, accepted that the use of the color had acquired distinctiveness.

But this wasn’t the end. Nestle had lost the first two rounds but persevered. Under EU law a single color is, in principle, capable of being registered as a trade mark, whether it is spatially defined or not, although the Courts and the Registry generally will cast a sceptical eye on applications, usually requiring evidence of acquired distinctiveness.

Any trade mark application must be capable of graphic representation and distinguish the goods or services of one undertaking from those of other undertakings. Both of which really go without saying. European cases have built upon these aspects – requiring that marks be “clear, precise, objective and durable” and not relate to a property of the product being registered. All these criteria are intended to stop a color trade mark from allowing one business to obtain an unfair competitive disadvantage over other businesses.

Where did it go wrong for Cadbury? Cadbury’s application had stated that the mark would be applied to the whole visible surface of the packaging or be the predominant color applied to the whole visible surface of the packaging. Sufficiently certain? Cadbury thought so, the Registry thought so (even the guidance issued by the Registry on the description of color marks said that this was acceptable), the High Court thought so but the Appeal Court said no. As the mark was not fixed to specific depictions then it embodied a “multitude of different visual forms” and was too uncertain to be valid. The Court said that to find otherwise would allow Cadbury an unfair competitive advantage.

Stepping back from the Judgment, this does seem a little far fetched. There is no necessity for purple Pantone 2685C to be used for packaging of chocolate and it is difficult to see what competitive advantage Cadbury would in reality gain. However, this Judgment again shows up that color trade marks don’t just face a hard time in the US Courts.

Where do we go from here? Well, what is clear is that Cadbury will try to head to the UK Supreme Court. However, other holders of color trade marks may not be sitting comfortably in their seats. There are many registrations that do not have any depiction or description attached to them – following Cadbury these in theory would be invalid. Equally, while applications for goods could be submitted with pictures of their use, it is far more difficult to see how this would be applied to services.

Therefore, overall, this Judgment is likely to undermine the ability to register single color trade marks in Europe at all and seems a further barrier in the attempts to extend trade mark law to cover more “exotic” aspects of goods and services outside of a word or a logo.