Cadbury in purple haze as Nestlé wins appeal

By Oliver Nieburg contact

- Last updated on GMT

Related tags: Cadbury, Chocolate

Cadbury unable to register UK trademark for its distinct shade of purple
Cadbury unable to register UK trademark for its distinct shade of purple
Nestlé’s appeal against Cadbury’s trademark for a particular shade of the color purple has been accepted by the UK Court of Appeal this morning.

This means that Cadbury cannot register its trademark for purple shade Pantone 2685C, which it uses on Cadbury Dairy Milk. However, Cadbury’s lawyers have warned that this does not give competitors a license to use Cadbury’s purple to package milk chocolate.

The Court of Appeal ruling overturns earlier decisions in Cadbury’s favour in the High Court and UK Intellectual Property Office.

Giving his judgment in the Court of Appeal, Sir John Mummery, said:“To allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. It would also offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage.”

The other two judges in the case both agreed with Mummery, leaving no dissenting judgements.

Cadbury may appeal

A Cadbury spokesman said: “We are disappointed by this latest decision but it’s important to point out that it does not affect our long held right to protect our distinctive colour purple from others seeking to pass off their products as Cadbury chocolate.

“Our colour purple has been linked with Cadbury for a century and the British public has grown up understanding its link with our chocolate. We are studying this particular ruling and will consider our next steps which include the possibility of an appeal.”

Cadbury still protected against knock-offs, say lawyers

Mary Bagnall, a partner at Charles Russell LLP, the law firm representing Cadbury, told this site that the Court of Appeal case was about the wording of the trademark and said it was never in question in this appeal that Cadbury was distinctive for the purple hue on milk chocolate packaging.

She said that Cadbury could still stop competitors using its purple under the common law principle of “passing off”.

She that a proposed revised European Trademark Directive, which would bind all EU member states if enacted, confirms that single colors may be trademarked.

 ‘Right outcome,’ says Nestlé

Nestlé's Quality Street My Purple Bar
Nestlé has attempted to register its own trademark for a slightly different shade of purple, which it uses for its Quality Street ‘My Purple Bar’

Nestlé said in an emailed statement to ConfectioneryNews: “We welcome the Court of Appeal’s decision to uphold Nestlé’s objection against Mondelez’s proposal to trade mark its Dairy Milk ‘Purple’ colour across a broad range of products. We believe this was the right outcome from a legal perspective.”

Cadbury and Nestlé’s purple patch

Cadbury and Nestlé’s purple spat dates back almost 10 years. Along the way Cadbury has won all legal wars, but lost small battles along the way that has thinned the goods covered by its purple trademark.

Cadbury filed a UK trademark application for the purple shade Pantone 2685C in 2004 to cover the following goods:

“Chocolate in bar and tablet form; chocolate confectionery, chocolate assortments, cocoa-based beverages, preparations for cocoa-based beverages, chocolate-based beverages, preparations for chocolate-based beverages, chocolate cakes”.

The application was allowed and published in the Trade Marks Journal in 2008, but because it was opposed by Nestlé it could not be registered.

UK Intellectual Property Office hearing

A UK’s Intellectual Property Office hearing in 2011 dismissed Nestlé claims that the color was not distinctive to Cadbury, but altered the goods covered to:

“Chocolate in bar and tablet form; eating chocolate; drinking chocolate and preparations for making drinking chocolate,”

High Court decision

Nestlé then took the case to the UK High Court, but that too was dismissed. However, Cadbury’s trademark was again diluted to cover only milk chocolate as the color lacked identity to Cadbury for dark, white and plain chocolate.

Nestlé subsequently took the case to the Court of Appeal, which today ruled in its favor.

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3 comments

If they were any good..

Posted by bob,

they would have won first time round. It took all the way to the Court of Appeal for Jenkins to get the win... pathetic waste of money on their part.

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An important decision

Posted by Caroline,

"This is an important decision that provides new guidance as to how to define a colour trade mark," said Stephen James, head of trade marks at RGC Jenkins & Co., the firm that acted for Nestlé. Joanne Ling, from the Jenkins team handling the case, agreed: "It also serves to remind brand owners and their advisors of the pitfalls associated with trying to protect a colour which is used inconsistently across a wide product range."

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A great win for Nestlé

Posted by Caroline,

“This is an important decision that provides new guidance as to how to define a colour trade mark,” said Stephen James, head of trade marks at RGC Jenkins & Co., the firm that acted for Nestlé. Joanne Ling, from the Jenkins team handling the case, agreed: “It also serves to remind brand owners and their advisors of the pitfalls associated with trying to protect a colour which is used inconsistently across a wide product range.”

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