In a recent appeal from the UK Intellectual Property Office to the High Court (Société des Produits Nestlé SA v Cadbury UK Limited), the Court has provided further guidance regarding the registration of colour trade marks. In particular, it looks at the significance of descriptions that accompany colour marks. It also highlights the importance of including a reference to an internationally recognised colour code as part of the description, to provide clarity to the trade protection that is sought.
In 2013, Cadbury applied to register three trade marks for the colour purple for chocolate. The marks each depicted a square with the colour purple and had the following descriptions:
- Mark 1 "The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods."
- Mark 2 – "The colour purple (Pantone 2685C), as shown on the form of the application, applied to the packaging of goods."
- Mark 3 – "The colour purple (Pantone 2685C), shown on the form of application."
Cadbury filed these marks in response to a Court of Appeal decision which had rejected its application for a trade mark for the colour purple with the following description:
“The colour purple (Pantone 2685C) as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”.
In relation to that earlier application, the Court of Appeal concluded that the inclusion of the word "predominant" in the description of the mark was not precise enough to refer to a singular trade mark but could refer to a trade mark that could take a multitude of different forms.
Nestlé opposed Cadbury's subsequently filed trade marks (Marks 1-3) on the grounds that these applications also did not fulfil the requirements of signs capable of meeting the requirements of a trade mark. Nestlé's opposition failed against Mark 1 as it was held that the description was clear that the colour purple would be applied to the "whole visible surface of the packaging of the goods" and therefore this trade mark fulfilled the condition of a sign under the Trade Marks Act. However, Nestlé's opposition succeeded in relation to Marks 2 and 3. Whilst Nestlé and Cadbury had in the meantime settled their dispute, Cadbury's appeal was heard by the High Court.
Meade J referred to the decision of the EU Court of Justice in Libertel, a case which involved an attempt by the mobile phone company, Libertel, to register the colour orange for telecommunication goods and services. In line with Libertel, Meade J noted that a colour per se, which is not defined in spatial terms, could have distinctive character and therefore function as a trade mark as long as it was capable of graphical representation and fulfilled the key requirements of a trade mark. This meant that it needed to be clear, precise, self-contained, easily accessible, intelligible, durable, and objective. This could be achieved by describing the colour by reference to an internationally recognised code, such as Pantone. Accordingly, Mark 3 was acceptable.
However, Meade J upheld the opposition in relation to Mark 2, taking issue with the wording "applied to the packaging" within the Mark's description, on the basis that this phrase was not specific enough. This is because the description stated that the colour would be applied to the packaging but did not state the exact proportion of the packaging that it would be applied to. This meant the description could encompass multiple representations of the trade mark and therefore other colour components. Mark 2 was therefore not precise enough to meet the requirements of a trade mark.
In comparison to Mark 2, there was no suggestion that Mark 3 could consist of the colour purple alongside something else.
Colour marks face the same criteria for acceptance as other trade marks – they need qualify as signs capable of fulfilling the requirements of a trade mark as set out in the Trade Marks Act. Distinctive character is a further requirement for the registration of trade marks and was not addressed in this decision.
Including an internationally recognised colour code, such as Pantone, can assist with the registration of a colour trade mark. However, it is also important to carefully consider the wording of any description that accompanies the representation of the colour mark. This decision implies that applications for colour trade marks that describe how the colour will be used on packaging or on the goods/services could risk facing challenges on the grounds that the wording used is not precise enough.