Cadbury’s attempt to trademark a shade of purple so that it would encompass a wider range of confectionery was rejected by the UK’s Court of Appeal this week.
The UK confectioner was attempting to update an existing trademark so that it would apply to other products, including cakes, drinks, and sweets – as well as chocolate bars.
In 1995, Cadbury trademarked the shade Pantone 2685C for chocolate bars and tablets. The iconic shade of purple is a powerful brand recognition symbol. But the company’s latest attempt to trademark the shade so that it “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods” was rejected by Lord Justice Floyd as it wasn’t clear enough.
Sharon Daboul, chartered trademark attorney at law firm Harbottle & Lewis, told Confectionery News: “This is the latest decision in a long-running battle between Cadbury and Nestlé over the registration of non-traditional trademarks. Whilst today’s judgement comes as no surprise, it will be a blow for Cadbury with its oldest UK color registration now being vulnerable.
“Registering a trademark covering a shape, or a color, can offer a valuable monopoly and a significant competitive advantage to manufacturers.”
Cadbury lost its battle following a complaint raised by rival Nestlé. Lord Justice Floyd said: “If allowed to be the predominant color rather than restricted to the whole surface, the registration could cover uses of purple in extravagantly different ways… the mark could appear as stripes, spots, a large central blob, or in any other form.”
In court Cadbury claimed the existing UK registration was actually for a series of two different marks: 1) the color 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 colour 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.
Lord Justice Floyd said it would not satisfy a requirement that marks must resemble each other and only differ in non-distinctive ways.
In simple terms, Cadbury wanted to trademark the color purple in any form, whether a minor part of packaging or major, and wanted to be able to have a monopoly on the purple shade regarding other products apart from chocolate bars.
Competitors such as Nestlé may now be considering their options in terms of cancelling the registration altogether, she told Confectionery News.
“This will likely make it harder for Cadbury to stop others from using the color purple for chocolate, and claiming a monopoly on the particular shade, but, provided they have acquired the necessary goodwill in the UK, there could be an argument under the law of ‘passing off’”.
Trademark law is constantly evolving, and owners of long-standing non-traditional marks should review their portfolios to ensure that older registrations remain valid (and re-file if necessary), said Daboul.
She advised companies that it is also worth keeping in mind what other rights might be used to protect a product, such as “design rights or copyright, which are sometimes better placed to deal with a particular issue.”
A spokesperson for Cadbury owner, Mondelēz International, said: “We are disappointed with this decision. Our iconic color purple has been used for Cadbury chocolate products for more than a century and is synonymous with the brand.
“We will continue to protect what we believe is a distinctive trademark and challenge those who attempt to pass off their products as Cadbury chocolate by using this color.”