11 October, 2013

Color Me Purple - Cadbury Trademark Ends on Appeal

Colors have always been an interesting area of trademark legislation, and to the layman more often than not, something which proves to be inconceivable. In a world where distinguishing your goods from other similar ones is imperative, and can prove to be a vehicle of imitation if you are not careful (more of which can be read here). In the latter part of 2012, Cadbury successfully had their trademark on the color purple (a variant of the color to be more specific) upheld by the court, in the field of chocolate, which was subsequently appealed by the initial challenging party, Nestle.

On appeal, which was decided earlier this month, the court had a further look at the issue of whether the color purple could be trademarked in this instance. In the Court of Appeal's opinion the Hearing Officer, the initial body responsible for the approval of trademarks in the UK, erred in his decision to allow the color to be registered. More specifically, the error "...stems from the misinterpretation of the verbal description of the graphic representation of the mark for which application is made... i.e. being the predominant colour applied to the whole visible surface".

In the Court of Appeals judgment, the description given by Cadbury "...[when] properly interpreted, does not constitute "a sign" that is "graphically represented" within Article 2 [of the Trade Marks Directive 2008/95/EC of 22 October 2008]. If the colour purple is less than total, as would be the case if the colour is only "predominant", the application would cover other matter in combination with the color, but not graphically represented or verbally described in the specific, certain, self-contained and precise manner required". Due to the fact that Cadbury had used the word 'predominant' in their description, the description was not sufficiently clear to be accepted as a 'sign' under the UK Trade Marks Act 1994 and the EU Directive. Cadbury used the color purple in a multitude of products, associating other elements with it along with the color purple, thus creating a multitude of variants of that sign,  making the sign unclear.

Purple was George's favorite color. No one could've guessed.
To summarize the Court saw that "[t]o 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". Clearly one can agree with the Court in their decision, as the registration of a color in itself is acceptable; however should it only be an element amongst other elements, it would not be a sign that distinguishes that product by itself. This is highlighted by such cases as Mars Australia Pty Ltd v Société des Produits Nestlé SA, where the color used was clearly the sign used (although the case in question did include other factors, such as the color's creation by Mars) and would distinguish the goods from others.

Source: Bloomberg

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