Cadbury’s long-running legal battle to protect its distinctive color purple has ended with parent company Mondelēz International giving up its trademark.
The brand first trademarked its shade of purple in 2012, banning other chocolate from using the same purple hue. Mondelēz tried to expand the trademark to cover the color even if it was only visible on a small part of a wrapper.
Joshua Little, associate, IP and technology, protection and enforcement at law firm Fieldfisher, commented: "This is an interesting, but not wholly unexpected conclusion to Cadbury's trade mark battle, following the unfavorable decision it received at the Court of Appeal last December. Cadbury's 1995 trade mark registration became vulnerable to invalidation when its subsequently filed application from 2004 – for the same mark – was successfully opposed by Nestlé, on the basis that it did not constitute a sign that was graphically represented with sufficient certainty or precision. It seems that Cadbury has now taken the decision to surrender its 1995 registration and avoid a further registry dispute.
Rival manufacturer Nestlé challenged the trademark in 2013 and won an appeal, claiming the trademark could threaten its hazelnut and caramel chocolate called the Purple One and the Quality Street box decoration.
London’s Court of Appeal ruled against Cadbury in December and it has decided not to launch any further appeal, meaning it could be under threat from rival brands using its purple tone.
“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,” Lord Justice Floyd said in his judgement.
"It will be interesting to see where Cadbury goes from here. It may still be able to enforce unregistered rights in the color purple, which has long been associated with the brand, but doing so will involve a rather large evidential burden, Little told Confectionery News.
"When applying for a trademark in the UK, applicants have to think carefully about the wording in the Trade Marks Act 1994, which now requires trademarks to be 'clearly and precisely' defined. This will make it very difficult to claim rights over colors in future."
A Mondelēz International spokesperson said: “We have not appealed the decision but will continue to protect what we believe is a distinctive trademark.”
The company claimed a legal victory over Nestlé two years ago by stopping its rival from obtaining a trademark for the four-finger shape of the KitKat.