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Friday, 22 April 2016

Cadbury suffers another blow in the battle to protect purple trade marks

Cadbury is on a seemingly perennial mission both to secure new as well as to protect existing trade mark rights in their signature purple colour for use on their chocolate products, most famously, their Dairy Milk bars. Following an opposition filed by Nestlé to the registration of one of Cadbury’s purple marks in Société Des Produits Nestlé S.A v Cadbury UK Ltd  [2013] EWCA Civ 1174, Cadbury adopted a proactive defensive strategy with the aim of preventing revocation of another existing registration for the same purple mark.

In the aforementioned opposition action (discussed on IPKat here) the Court of Appeal had to consider whether the mark in question had been validly registered. The mark was described as -
"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."

Sir John Mummery held that—

 [55] “the description of the mark as including not just the colour purple as a sign, but other signs, in which the colour purple predominates over other colours and other matter, means that the mark described is not “a sign”. There is wrapped up in the verbal description of the mark an unknown number of signs.”

 The mark was also found to fail the graphic representation requirement [55] “because the unknown number of signs means that the representation is not of “a sign.”

Fearing that this reasoning might be applied to similar registrations, Cadbury initiated an action before the Registry, the decision of which was appealed and decided before the High Court in Cadbury UK Ltd v The Comptroller General of Patents Designs and Trade Marks [2016] EWHC 79 (Ch).  The aim of  the action was to  eliminate  the potentially invalid description for mark 2020876A (‘876’). The 876 mark appears on the register as follows:

together with the following description:

“The mark consists of the colour purple 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.
The mark consists of 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.”
The problem for Cadbury was that, under s. 44 UK Trade Marks Act 1994 (“TMA”), alteration of an existing mark is not allowed -

44. – (1) A registered trade mark shall not be altered in the register, during the period of registration or on renewal.

 To overcome this seemingly fatal hurdle, Cadbury argued that the registration in question was in fact a series of marks in accordance with s.41 of the UK Trade Marks Act 1994 –

41. - (1) Provision may be made by rules as to - 
(a) the division of an application for the registration of a trade mark into several applications;
(b) the merging of separate applications or registrations;
(c) the registration of a series of trade marks. 

(2) A series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.

 Cadbury then sought to forestall a revocation action to the registration by seeking to eliminate the potentially vulnerable description pursuant to rule 28(5) of the Trade Mark Rules 2008, which provides as follows:

28 (5) At any time the applicant for registration of a series of trade marks or the proprietor of a registered series of trade marks may request the deletion of a mark in that series and, following such request, the registrar shall delete the mark accordingly.

Cadbury argued that there are two marks in the alleged series; one which describes purple as applied to the ‘whole visible surface’ and a second in which purple is ‘the predominant colour applied to the whole visible surface.’ Cadbury sought to delete the second mark in the series.

The Hearing Officer refused Cadbury’s request for three reasons. First, Cadbury did not apply for a series mark at the time of registration, so the mark could not now be treated as such. Second, there was no mark to be deleted because the words in the registration did not describe a mark (similar to the reasoning in the opposition discussed above). Third, any deletion amounted to alteration by another name. As noted, such an alteration is not allowed under s.44 UK TMA.

Baldwin QC, sitting as a Deputy Judge of the Chancery Division in the High Court, dismissed Cadbury’s appeal. Agreeing with the Hearing Officer, he held that –

“the 876 mark is not a series mark, the description is not of two marks or of a series of marks, there are no identifiable members of any series which might be the subject of a request for deletion, accordingly any request for such a deletion cannot be entertained and the appeal must be dismissed.”
Cadbury and Nestle fighting for their IP rights

This Kat reckons that in seeking to take a defensively proactive action, Cadbury may have ultimately made it easier for Nestlé to seek revocation of the registration (relying on the outcome of the earlier opposition case). These two feuding chocolate makers never seem to take a break from litigation, so this KitKat won’t be surprised if an appeal from the refusal to amend the mark soon follows. The IPKat thanks RGC Jenkins & Co, which represented Nestlé  in this matter, for alerting the IPKat to this development.   

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