The Color Purple: Nestlé v Cadbury

You don't want to see the next photo of the 
AmeriKat after eating some chocolate....

Following an unfortunate case of chocolate bar-related salmonella poisoning several years ago, the AmeriKat has never been able to view chocolate in the same tranquil light as the rest of her peers. She rarely eats it and if she does, its only a small amount. Her body, apparently, still recalls the liters of Gatorade laced with saltine crackers swirling in her hollow stomach and the disturbing thoughts that death may be the preferred option. So, as she sat down this evening to embarrassingly and belatedly continue tackling (having initially started on this only a day after the judgment) the latest Chancery Court masterpiece on the trade mark registrability of color from His Honour Judge Birss QC in Nestlé v Cadbury, she was half expecting a sudden wave of wooziness to come over her.

Cadbury, the famous chocolate manufacturer, applied to register a trade mark (No. 2 376 879) for the color purple (Pantone 2685C) "applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods" for goods in Class 30, namely "chocolate in bar and tablet form" and other miscellaneous chocolate products. The application was published in the Trade Marks Journal in May 2008 and a few months later, in August, Nestlé opposed the application. In October 2011, the hearing officer of the opposition (Mr. James) allowed the application but amended the specification of the goods to include "chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate". Only "chocolate in bar and tablet form" survived the opposition as it was held that the mark had acquired distinctive character for that subset of goods, having been used on Cadbury's Dairy Milk since 1914. Other casualties, following the amendment, included "chocolate assortments" - which in the Cadbury catalogue did not always consist of the purple packaging (i.e. Roses); "cocoa-based beverages" - unlike Cadbury's drinking chocolate product, there was no evidence that it had been sold in purple packaging; and "chocolate confectionary" (meaning blended chocolate, as opposed to chocolate per se which did survive and was resurrected in the form of "chocolate for eating").

Nestlé appealed and the case found its way to Judge Birss QC in May of this year. The big point before Judge Birss QC was a point of principle - and gosh, do lawyers love those. The point was whether Cadbury's mark was a "sign capable of being represented graphically", with Nestlé's contention that the color purple was not (1) "a sign" and was not (2) "capable of being represented graphically" and therefore, not registrable under Section 3(1)(a) of the Trade Marks Act 1994. So, invoking memories of the famous YSL v Louboutin case on the color red for high fashion footwear in the States, Judge Birss QC explained:

"Unless the registration of trade marks is kept firmly in its proper sphere, it is capable of creating perpetual unjustified monopolies in areas it should not. This is not a new problem. In his judgment in British Sugar v James Robertson [1996] RPC 281, which related to whether the word “treat” was a valid trade mark Jacob J (as he then was) started his judgment with the well known passage from the judgment of Cozens-Hardy MR in 1909:

"Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure. "

What was said a century ago about the great common of the English language might be said today about the world’s great common of the visible electromagnetic spectrum. In that sense the case before me is really very simple. Can Cadbury, even if they have shown that the public associate the colour purple with Cadbury’s chocolate, obtain a trade mark registration for that colour per se?"

The judge went on to consider the classic four judgments of the Court of Justice of the European Union (CJEU) on "exotic" trade marks (smells, colors per se and 'other things'). In Libertel v Benelux, the CJEU considered whether a Dutch telecommunications company could register the color orange for telecoms goods and services. Contrary to the Advocate General's opinion, the court held that a color per se, which is not bound by any shape or outline, is capable of being registered as a trade mark. However, to satisfy the conditions of Article 2 of the Trade Mark Directive (i.e. Section 1(1) of the Trade Marks Act), the color must also be a sign capable of distinguishing the goods/services of one undertaking from another.

In Sieckmann v Deutches Patent und Markenamt, the CJEU addressed wither the smell of cinnamon (ethyl cinnamate) could be registered as a mark. The Court held that smell could be a sign under Article 2, but it must also be capable of being represented graphically - which despite the sample and chemical formula, did not satisfy that requirement. The thrust of Seickmann and, later Libertel, was that the requirement for graphical representation necessitated that the mark be described with sufficient clarity, precision intelligibility, objectivity and accessibility so that the scope of the proprietors' right was clear and certain. A color may constitute a sign (when accompanied with a description in words and a designation of the color using an internationally recognized identification code such as Pantone), but it cannot be presumed to be a sign and much depends on the context in which it is used.

Heidelberger Bauchemie was the third case referenced. In that case, a combination of blue and yellow "in every conceivable form" was considered. Again, as in Libertel, the Advocate General stated that colors without any spatial limitation did not fulfil the requirements of Article 2 as they did not constitute a sign capable of graphic representation but the CJEU disagreed holding that the Court's decision in Libertel was sound - that colors per se were capable of being a sign. The Court again made clear that the purpose of the graphical representation requirement (clear, precise, intelligible, etc) was to prevent a proprietor who would have an unfair competitive advantage. The fourth case was Dyson v Registrar of Trade Marks where Dyson sought to register the transparent collection chamber of a vacuum cleaner as a trade mark. The CJEU in Dyson reaffirmed its decisions in Libertel and Heidelberger and held that because the mark was for "all conceivable shapes" of a clear collecting bin, this did not satisfy the requirement that the graphically representation be clear and precise.

Nestlé's case was that the mark applied for fell foul of Dyson because the mark - the color purple as applied to the whole or "predominant color" - depended on human subjectivity and other uncertain factors (i.e. what constitutes as being the "predominant color"?). As such, the mark could not be a sign and could potentially lead to abuse and anti-competitive effects because of the inherent uncertainty. In particular, Nestlé contended that in fact the mark was not registrable because

1. Alternatives:  The language of the mark applied for - whole or predominant application of the color purple - was indeterminate as it presented alternatives (i.e., whole or predominant)

The judge held that the description in fact did not present alternatives - all it was doing was claiming the use of a color as the predominant color which may consist of the whole visible surface or it may cover less, provided it was the predominant color.



Is this square "wholly purple", "predominantly purple" or both?

2. Subjectivity:  The usage of "predominant" meant that there was a degree of subjectivity.

The judge agreed with Mr. James who decided that if uncertainty existed as to how much purple would need to be applied to constitute "predominant", that uncertainty would still remain even without the written description. If that really was the case, it would be impossible to ever trade mark a color per se and such a position would undermine Libertel.

The judge also agreed with Mr. James's reasoning that although the words required a decision taker to make a judgment as to what constitutes "predominant", the evidence provided showed that such a decision would not present any more difficulty than other judgments that were required to assess whether a mark was infringing or not, i.e. is the shade of purple used covered by the mark or not? The judge stated that the use of the word "predominant" did not "introduce any more vagueness or uncertainty than is already present and acceptable in a trade mark registration of this kind".

3. Color combinations:  The usage of the word "predominant" meant that it recognized that another color or colors would be present which in turn meant that the mark was for a color combination and would therefore fall foul of Heidelberger since it was not spatially delimited.

The judge again agreed with Mr. James who had decided that any other material that is used with the "predominant" color purple would not form part of the sign applied for and, as such, it was not appropriate to regard the mark as a combination of colors.

Judge Birss QC's gown
is not predominantly
purple, but his hood is...

In summary, Judge Birss QC responded to Nestlé's argument by stating that a mark consisting of a color per se, provided it is defined properly in words and with a Pantone code, is capable of satisfying Article 2 even though that color can "obviously be used in an infinite variety of ways". The current state of the law in this respect was not only clear under Libertel but robust given that the CJEU went against a strong opinion from the Advocate General supporting a contrary position and again, in Heidelberger when the Court who was invited to review Libertel, declined to do so. Cadbury's registration, held the judge, was capable of being a sign under Article 2 and on the evidence had acquired distinctiveness for chocolate.

It is clear that the judge followed the letter of the law in terms of the CJEU's jurisprudence on registrability of colors per se, but the AmeriKat wonders if that approach failed to consider the subtle argument being presented.  That is to say it wasn't an opposition per the registrability of a color per se, but an opposition per the registrability of the mark in fact, i.e. that the mark as applied for introduced uncertainty and implicitly introduced additional colors under the mark by the inclusion of the word "predominant". One wonders if the AmeriKat introduces a milk chocolate candy bar (yes, "candy bar") with a wrapper which is half purple (Pantone 2685C) and half chartreuse, would this classify as being predominantly purple and caught by the registration? Further, if the judge and Mr. James are correct in that the addition of the verbal description neither adds or detracts from the inherent legal uncertainty of these types of marks, then what is the point of adding a verbal description in color registrations (albeit the judge at para 46 said a color mark needed "to be defined properly in words")?