Nestle v. Cadbury: The Pantone colour 2685C (purple)

Cadbury has been finally defeated by Nestle in a long running legal battle over Cadbury's UK trade mark registration for its famous shade of purple.

Cadbury originally applied to register the shade of purple  (pantone 2685C) that it uses on many of its chocolate wrappers, including Dairy Milk, as a trade mark back in 2004. Specifically, Cadbury applied to register, in class 30 (which includes other food stuffs as well as chocolate):

"The colour purple (Pantone 2685C) ... applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods."

Nestle opposed the registration of Cadbury's trade mark, successfully persuading the UK IP Office to instead register Cadbury's purple for "Chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate." Not content with that, Nestle then applied to the High Court to have Cadbury's trade mark registration cancelled on the grounds that a colour is not "a sign" - that is to say, purple as a colour on its own does not meet the basic criteria to be registrable as a trade mark.

The High Court disagreed with Nestle, who then filed an Appeal to overturn the High Court's decision to maintain Cadbury's trade mark registration. The Court of Appeal handed down its judgement ([2013] EWCA Civ 1174last Friday, 4th October in favour of Nestle, cancelling Cadbury's trade mark registration.

The decision will be of interest to owner's of other colour trade mark registrations which use the phrase "the predominant colour" in their specification of goods, since it is this wording that the Court of Appeal took issue with. Interestingly, the Court of Appeal suggested alternative wording, replacing "the predominant colour" with "as applied to all or to more than 50% of the whole visible surface." The Court hinted that if Cadbury's application had used this alternative wording the outcome might have been different.