The decision is dated 20 October and this Kat has been ever-so-slightly ignoring it ever since, because (i) it didn't seem so important at the time and (ii) it was already attracting plenty of coverage in both the specialist media and the popular press. However, his email in-tray is literally sagging under the weight of people either sending him links to it or asking him why he hasn't reported it yet. So, bowing to the inevitable, this Kat gives you
Cadbury Ltd's Application, Case O-358-11, a 41-page decision of the excellent Allan James who (this blogger guesses) is senior enough to make sure of getting at least a decent share of the fun cases that require the attention of an Intellectual Property Office Hearing Officer.
The confectionery company Cadbury, now subsumed by
Kraft, applied to register the shade of purple featured above, right, as a UK trade mark for a range of chocolate-based products. Deadly rival Nestlé opposed, citing pretty well every ground of opposition known to mankind, including bad faith and lack of distinctiveness. Cadbury fought its corner vigorously, basing its application on the last resort of the dodgy trade mark proprietor --distinctiveness acquired through use
[this is about as close as IP law gets to letting a litigant base its case on public popularity, notes Merpel].
According to Allan James, mainly rejecting the opposition, Cadburys' application represented the mark with sufficient clarity and precision (by means of a
Pantone reference and a verbal description of the colour as being used on the whole surface of packaging, or as a predominant colour on it). and that the sign fulfilled all known criteria of registrability. The claim as to bad faith was a slightly silly one: Cadbury, it was argued, did not actually intend to use the colour on the whole visible surface of any packaging. It could however be safely assumed that the "entire surface" of packaging would mean everything except the product name itself, which might well be written in a different colour since no-one could read it if it wasn't. Nestlé did, however, succeed a little bit: Cadburys could only have their purple mark for goods in respect of which there was indeed evidence of acquired distinctiveness: c
hocolate in bar and tablet form; eating chocolate; drinking chocolate; preparations for making drinking chocolate.
Though he has no inside knowledge, this Kat can't imagine that this decision will go unappealed, being aware of the zest with which Nestlé has protected both its brand portfolio against real and imagined threats in the past.
Deep Purple
here
The Colour Purple
here
Purple chocolate colouring
here
Comment by John Langlois on IP Brief
here
Reviewed by Jeremy
on
Thursday, December 01, 2011
Rating:
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With the greatest respect to Merpel's erudition, isn't 'the closest IP law gets to letting a litigant base its case on public popularity' actually passing off law? After all, what is goodwill but a stash of accumulated public popularity?
ReplyDelete@Hastings: I'd say it's a dead heat since trade mark law is just the grown-up statutory form of passing off. To put it another way, trade mark law is to passing off what the salamander is to the axolotl.
ReplyDeleteHas the Kat been keeping its eye on the cream rather than the milk?
ReplyDeleteWhilst deadly rival Nestlé might have opposed citing pretty well every ground of opposition known to mankind, perhaps the Kat has let its mind wander and forgotten that colour marks are not inherently distinctive. Even in its drowsy moments, our feline friend should have remembered that distinctiveness for such marks can only be acquired through use (so perhaps it was somewhat provocative to connect the application with that of the last resort of the dodgy trade mark proprietor, distinctiveness acquired through use). Or may be the Kat had its whiskers crossed when it thought the decision didn't seem so important at the time!
Merpel's note that "this is about as close as IP law gets to letting a litigant base its case on public popularity" is pretty good though.
I'm glad that it has been decided that the word "predominantly" is clear enough to fulfil s. 3(1). I can't possibly imagine a third party trying to clear the register having difficulty in establishing whether their client's use would fall within "predominantly".
ReplyDelete1) The proportion of the surface area of the packaging on which the colour appears.
2) The position on the packaging where the colour appears, particularly whether the colour appears on the front of the packaging and at the top of the packaging as the product is viewed.
3) Whether the colour appears as a continuous block or is mixed up with other colours.
See.. clear? I am not sure Allan James is right when he says it's no more difficult to work out the rights than any other mark. In word sense it is the equivalent of a registration for the "the smooth, or a word in which the letters of the word smooth are the predominant letters". So effectively they are claiming the penumbra and will have rights in the penumbra of the penumbra... the usual difficulty is establishing whether marks are sufficiently similar for there to be a likelihood of confusion - in this case there is also the difficulty of knowing whether you fall within the description of the sign.
And surely "the whole visible surface, or being the predominant colour applied to the whole visible surface" is 2 marks - there should have been a series objection!
I can't disagree that the colour reminds me of Cadbury's chocolate, but I don't believe it acts as a trademark however distinctive it may have become through use. No-one would buy a bar of chocolate simply having a purple wrapping with no further branding. No-one would be attracted to a bar by its purple colour thinking "oh that must be a Cadbury's bar", only to be disappointed when the branding says Nestle. No-one would be confused.
ReplyDeleteThe same thing goes for BP's green trademark. The reason why everlasting IP rights are bearable for trademarks can only be that they are not overly restrictive and leave the compeition with their own branding options (hence the ban on descriptive marks). The number of colours is, however, limited and I do not believe any infringement action will be limited to colours having the exact pantone refernence. Cadbury will attack anyone using purple in any amount that is considered significant - 10%.
I am looking forward to Mr James' patent examiner colleagues allowing my claims to 'predominant' amounts..
How could this mark possibly have been registered given that there is at least one other chocolate wrapped in purple, "Milka"?
ReplyDelete"The descendents of famous Swiss chocolatier Philippe Suchard founded Milka in 1901. Philippe Suchard had created a small chocolate factory that he was mainly operating on his own. He died in 1884, leaving his confiserie/chocolaterie to his children who in turn founded Milka based on their success in adding milk to Philippe Suchard's recipe. The famous Purple Milka Cow is now a multilingual mascot since Milka chocolate is produced all over Europe and exported to the rest of the world.
(see, e.g., http://www.examiner.com/french-culture-in-chicago/let-them-eat-chocolate)