In the UK, Cadbury has been granted the exclusive right to use the colour purple (pantone 2685C) in respect of milk chocolate. We discuss the facts of the case while drawing attention to a requirement for registering non-traditional signs as trade marks in Australia.
The recent decision issued by the UK High Court provides clarity as to how a single colour must be used to support a UK trade mark registration. Undoubtedly, this decision will benefit both parties, Cadbury and Nestlé, in designing effective marketing strategies around the use of single colours as trade marks. Given the lack of judicial decisions concerning colour marks in other jurisdictions, Cadbury and Nestlé will likely adopt these marketing strategies globally, and the decision may have international ramifications in other similar circumstances.
While some might say that Nestlé lost the appeal, Nestlé was at least successful in having the scope of Cadbury’s application restricted.
In most jurisdictions, the right to exclusively use a trade mark can be challenged post registration. In some jurisdictions, such as Australia and the UK, it is also possible challenge this exclusive right pre-registration.
This case was brought before the High Court by Nestlé on appeal from an adverse decision made by the UK Intellectual Property Office’s opposition hearing division.
Nestlé opposed Cadbury’s application to register pantone 2685C as a trade mark. Based on evidence presented during opposition proceedings, the hearing officer allowed Cadbury’s application to proceed but with the following specification of goods:
chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate
While Nestlé did concede that a single colour could function as a trade mark, an appeal was filed as pantone 2685C was not considered to be capable of being represented graphically. Nestlé had also taken issue with the scope of some of the goods in the application.
The Decision of the High Court
Under UK law, a registrable trade mark is, amongst other things:
“…a sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”.
The High Court considered the point that the ‘represented graphically’ requirement enables a trade mark to be defined with clarity and precision. However, Nestlé argued that a colour covering a multitude of visual forms is not capable of being represented graphically, but rather has the potential to lead to abuse and anti-competitive effects because of its inherent uncertainty.
In relying on previous decisions by the Court of Justice of the European Union, the High Court concluded that single colours are capable of:
- satisfying the ‘represented graphically’ requirement prescribed under UK law, and
- functioning as trade marks depending on the context in which they are used.
Accordingly, pantone 2685C, when applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of chocolate, was considered capable as functioning as a trade mark.
Evidence submitted by Cadbury supported the use of pantone 2685C on milk chocolate, but not other kinds of chocolate such as dark or white. Accordingly, the Court approved the following amended specification of goods for Cadbury’s application:
milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate
Point to Chew Over
The requirement for registrable trade marks to be ‘represented graphically’ under UK law is the same under Australian law. Notably, the words ‘represented graphically’ have not been judicially defined in Australia. IP Australia’s position is that a trade mark can be represented graphically by using symbols in the form of diagrams and/or writing. Hence, for trade mark applications containing single colour marks, a description and a pictorial representation of the colour must be supplied.
Given that non-traditional signs such as sound, scent, texture and taste can be registrable as trade marks in Australia, care must be taken to ensure that the ‘represented graphically’ requirement is met by including appropriate descriptions and/or pictorial representations.