The UK High Court has ruled that confectionery brand Cadbury can exclusively use the colour purple on its packaging for chocolate products.
Judge Colin Birss largely dismissed an appeal brought by Swiss company Nestlé, which objected to Cadbury’s trademark for the Pantone 2685C shade of purple. Nestlé opposed the application (granted in 2008), but in a hearing in December 2011, Allan James at the Registrar of Trade Marks upheld the mark.
Nestlé appealed against the decision but on October 1 Birss said that since the public associate the colour purple with Cadbury’s chocolate, the company can trademark the Pantone 2685C shade.
In the hearing in 2011, James ruled that the mark’s specification should read: “Chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate.”
As part of its appeal to the High Court, Nestlé argued that the goods’ classification should have been limited to “milk chocolate”. Birss agreed with Nestlé, but noted that Cadbury had never used the colour in conjunction with other types of chocolate.
Ruling in Cadbury’s favour, he said: “The appeal is dismissed save in relation to the point on milk chocolate as opposed to chocolate generally ... My preliminary view is that the specification should read: ‘milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate’.”
The ruling confirms that single colours can be trademarked in the UK, provided that the mark is defined properly “in words” and “by reference to an internationally recognised identification code”, said Ian Wood and Mary Bagnall, partners at Charles Russell LLP.
“It is now very clear that where the colour is clearly specified and the trademark is registered for no more than the precise goods or services for which the colour has become distinctive, it is now going to become difficult to attack such trademark registrations,” they said.
In September, a court in New York ruled that fashion producer Louboutin can trademark its red-soled shoes, only if the colour contrasts with the rest of the shoe. The ruling means that rival Yves Saint Laurent, sued by Louboutin, can continue selling its monochromatic red shoes.
This article was first published on 01 December 2012 in World IP Review
Cadbury, colour trademark, UK High Court